Passing off is an important remedy that exists in South Africa and other countries and which has an English law heritage. In essence, passing off is a remedy that allows a brand owner who feels that a rival is causing consumer confusion through the use of a confusingly similar mark or get-up, to take action, even if the brand owner does not have a trade mark registration. Passing off seeks to protect the goodwill and reputation that a brand owner has acquired in a trade mark or get-up. While passing off comprises an important remedy passing off cases are seldom straightforward!
The recent UK High Court judgment in Glaxo Welcome UK Limited, Glaxo Group Limited v Sandoz Limited and others is an absolute monster. The case involved the alleged passing off of a popular purple-coloured inhaler that is used for the treatment of asthma. Initially there was also a claim of trade mark infringement but this fell away when the trade mark registration for the colour purple was cancelled. In so far as passing off is concerned, Glaxo not only claimed that there would be consumer confusion as to the origin of the product, but that there would also be an assumption that the later product was the equivalent of the Glaxo product.
The passing off claim failed. The judgment is long and heavy-going and it is beyond the ambit of this article to delve into it in detail. The judgment does, however, provide a useful summary of the principles that are involved in a passing off enquiry:
- Passing off involves three elements, namely,
- goodwill or reputation attached to goods or services by association with the identifying get-up;
- a misrepresentation, whether or not it is intended to deceive ;
- a likelihood of damage as a result of the erroneous belief that the defendant’s goods come from the same source as the plaintiff’s. This is, of course, the classic trinity, a well-known trade mark or get-up, a confusingly similar trade mark or get-up, and likely consumer confusion.
- The relevant date for determining whether or not there is a passing off is the date on which the defendant started offering its product or service under the allegedly similar trade mark or get-up.
- There must be deception, mere copying is not enough. It is not enough to establish that consumers might wonder whether there is a connection between the two products, it is necessary to establish that a substantial number of them might actually be misled.
- Normally the misrepresentation will be as to the origin of the goods or services (trade origin). But the plaintiff does not necessarily have to prove that people believe that the defendant’s goods or services are those of the plaintiff. The plaintiff simply needs to prove that people believe that the plaintiff is in some way responsible for the defendant’s goods or services, or that they share a common (unknown) manufacturer.
- If the trade mark or get-up on which a plaintiff is relying, comprises a shape or colour of the goods or packaging (as opposed to the brand name or the logo) it can be very difficult to establish that these features are in fact distinctive of the plaintiff’s product, in that consumers associate that colour or shape with the product.
- Furthermore, when it comes to features such as shape and colour it may not be enough to merely show that the public recognises the shape and colour of the goods and associates that shape or colour with the product, particularly if it is the only product of its kind. It is quite possible that the public might simply see the shape as a characteristic of a product of that kind.
- The misrepresentation may not necessarily or exclusively relate to the commercial origin of the product, it may in fact suggest equivalence. It may suggest that the later product is the equivalent of the earlier product. This is sometimes referred to as “extended passing off”
- The misrepresentation does not need to be deliberate, it can be innocent. If, however, the misrepresentation was intentional the courts will be quick to find that the misrepresentation does constitute passing off
The remedy of passing off can be a useful one, but can also be fraught with difficulties, especially those associated with proving a reputation in the relevant trade mark or get-up and establishing a likelihood of consumer confusion. Many of these difficulties can be avoided by relying on trade mark infringement. To do so the plaintiff must have a relevant trade mark registration, and often this will need to be one that protects the get-up that is used, and not simply the brand name. Brand owners should bear this in mind and ensure that they secure trade mark registrations for key get-ups.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.