The foundation of a passing off claim lies in the injury to the reputation and goodwill of the plaintiff’s business. Spalding v. A.W. Gamage Ltd., (1914 – 1915) All E.R. Rep. 147 is considered to be one of the landmark cases in the development of such a cause of action in which it was held that:
“… the proposition that nobody has any right to represent his goods as the goods of somebody else. It is also sometimes stated in the proposition that nobody has the right to pass off his goods as the goods of somebody else. I prefer the former statement, for whatever doubts may be suggested in the earlier authorities, it has long been settled that actual passing off of the defendant’s[*376] goods for the plaintiff ‘s need not be proved as a condition precedent to relief in equity either by way of an injunction or an inquiry as to profits or damages; Edelsten v. Edelsten and Iron-Ox Remedy Go. Ltd. v. Co-operative Wholesale Society, Ltd. Nor need the representation be fraudulently made. It is enough that it has in fact been made, whether fraudulently or otherwise, and that damages may probably ensue….”
Section 35 of the Civil Wrongs Law, Cap. 148, introduced into our legal system the common law tort of passing off. The implications of this section were examined in Universal Advertising and Publishing Agency & Others v. Vouros, 19 CLR 87 which established that despite the narrow definition contained in s. 35 a trader must not only refrain from passing off his goods as those of another but also from making any such representation in respect of his business. The principle underlying the decision is that liability for passing off is extended to situations of not only goods but also services, as recognized at common law.
The elements which a Plaintiff in such an action must prove in order to succeed have been authoritatively stated in several ways, in cases involving different facts and those may be summarized as follows:
- The Plaintiff must establish a goodwill or reputation attached to the goods or services which he supplies or provides in the mind of the purchasing public, whether it consists of a brand name or trademark or trade description or features of labelling or packaging,
- He must demonstrate a misrepresentation by the Defendant to the public (whether intentional) leading to or likely to lead the public to believe that the goods or services offered by him are the goods and services of the Plaintiff.
- He must demonstrate the he suffers (or that he is likely to suffer) damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the Plaintiff.
Trademarks and Trade Names
i) Legal Action for Passing Off
The most common cases are those in which the Defendant uses or imitates a trademark or tradename under which the Plaintiff’s goods or services have become known to the public. It is important to note that if the trademark or tradename are registered then any passing of claim may also involve infringement of the rights given by registration only.
However even if the trademark or tradename are not registered that doesn’t mean that the action will not be successful if it can be established that the reputation of the mark or name is such that the use the defendant has made of it is in fact deceptive. It is not necessary for the Plaintiff to show that he is himself known to the public by name but all that is necessary is to show that the trade, or the public, recognize the mark or name under examination as denoting the goods or services of a particular manufacture or service provider, so that substantial proportion of the public, buying that good or service, would be likely to expect to get his goods or services.
The remedies in an action for passing off are principally damages or an account of profits (loss of sales etc) and an injunction prohibiting and restraining the Defendant and his affiliated companies or representatives from using the mark or name in question.
ii) Recourse (Art. 146 of the Constitution)
Provided that a recourse to the Administrative Court is filled within 75 days from the date of publishing the registration or from the day that the Plaintiffs came to know about such registration, the legality of such a decision by the Registrar to register such a trade mark shall be examined by the Court.
The Court is confined to review such recourse and will only intervene if the name or marks are “too like” which suggests that the similarity must be striking or overbearing (Entechno Developments Ltd v. The Republic of Cyprus (1986) 3 CLR 2613). Article 19(2) of the Companies Law Cap 113 is also relevant.