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Misrepresentation Leading to Confusion (Confusion in names (Use of…
Misrepresentation Leading to Confusion
McCambridge v Joseph Brennan Bakeries
SC: The crucial point is whether the presentation or packaging of the product leads, or is likely to lead the public the believe that another manufacturer made the product in question'
For threshold to be met, sufficient that a D represents its goods in such a way that the claimant's business or goodwill will be damaged
- Proof of intention to deceive is not required
Claimant may prove misrepresentation by calling evidence that the relevant public were in fact confused, but may also succeed in a case where there is no such evidence
Test: the impression likely to be produced, on the likely customer, taking into account customer perception and imperfect recollection
1. Intention to deceive or mislead on part of D not required
Person can be guilty of passing off while behaving entirely 'innocently'
Not a defence for D to say he was not aware of P's brand
2. Test to be applied is to consider the situation from the POV of the likely customer, taking into account 'customer perception and imperfect recollection'
Tattinger v Allbev
: C of A held that selling a carbonated beverage under the name 'elderflower champagne' and in a thick bottle with mushroom cork risked confusion with the sparkling, alcoholic French drink from the Champagne regious of France
While sophisticated consumer of P's products might know better, the average shopper coming across D's product might well be confused
Confusion in names
Use of identifcal name
C and A case= likely to give rise to confusion
Similar names
Allergan Inc v Ocean Healthcare
:
Facts: Ps claimed its Botox product had become a househol consumer name
Botox was a prescription only product with therapeutic and cosmetic applications
Had to be prescribed by a medical practitioner, could only be provided from a pharmacy and was administered from a syringe
Issue: Ds produced an anti-wrinkle cream called Botoina
Discussion: Discussing the ways in which a name could give rise to confusion, McGovern J identified the following areas of consideration
a) Visual Similarity: the way in whuch he two names would look printed on paper
this case- first four letters visually identical
b) Aural similarity: consider how the names would sound
this case- phonetic similarity
c) Conceptual similarity- meant in he sense of etymological root of the name
did not apply in this case as both products had contrived names
Held Court noted these factors inrespect of the name
also particular emphasis on the syringe-like applicator in adverising and promotion of the D
Judge of view D's get-up was such as to 'enable the D to piggy-back on the goodwill which has been established in the product Botox'
A trader is not even guaranteed to be allowed to use his own name
O'Neill's Irish International Sports v O'Neill's Footwear drying Co
D prevented from using his name in respect of marketing of his footwear dryer
He had been selling the product in a shoe-box shaped pacakage, with O'Neill's Footwear Dryer written on it
Court satisfied
that the D had presented its goods to the public in such a manner as to be able to take advantage of the reputation and goodwill generated by the Ps
Jameson v Irish Distillers
P was owner of whiskey distillers
D sold whiskey under name William Jameson and co
Poor sales
Tried to change to Jameson whisky
Using own name but passing off
Confusion from Packaging
Even in cases where a trader has used different and distinct name to market his product or service, passing off can still be established based on other factors
Obviously, P would have to show it had a reputation in the packaging concerned
Reckett and Coleman v Borden (Jiff Lemon Case)
Facts: P had marketed its products under name 'jif' and sold it in a lemon shaped container
D attempted to sell lemon juice in similar container
Held: D guilty of passing off notwithstanding their label quite easily distinguishable from P's
Polycell Products v O'Carroll
Facts: P produced adhesive and sold it in distinctive packaging
D produced product called 'clingcell' and sold it in similar packaging to P
In holding there was passing off, Court said regard must be had to
The general get up of the packages
Size and shape
Material used
Combo of colours
Decoration and lettering
Arrangement of labels
Spacing of words
Overall picture presented from entire combination
Protection does not extend to product itself
L'Oreal v Bellure
: noted the smell of a perfume could not be protected- 'the law of passing off is no designed to protect trader against others selling same goods or copied goods
United Biscuits v Irish Biscuits
: P unsuccessful in seeking to apply law of passing off to the shape of its Cottage Creams biscuits
Packaging used different but biscuits similar once out of package
Confusion from advertising
Method by which the goods are advertised can ground action in passing off
Cadbury Schweppes v Pub Squash Co
: Lemon drink called solo was packaged in a beer can and advertised with a canoeist fight the rapids
D subsequently launched 'pub squash' a similar can and similar advertisement
Held: As no confusion of the public, there was no basis for the granting of injunction
Obiter: no reason why advertising could not ground action for passing off
Miscellaneous Misrepresentations
Celebrity endorsement
Irvine v Talksports
Formula 1 driver claimed passing off re his photo in an advertisement for D's radio station
Court acknowledged common practice for famous people to exploit their names and images by way of endorsement
Law of passing off should reflect commercial reality that manufacturers and retailers will pay for endorsements
There had to be an implicit representation of endorsement, recommendation or approval
Fenty v Arcadia Group Brands
D sold tshirts bearing image of P
P had numerous different business dealings outside world of music, including arrangements with clothing and makeup brands
Held: P held to have ample goodwill to succeed in passing off
Scope of good will no only as music artist but also in world of fashion
Judge said the issue of misrepresentation leading to confusion
Would always depend on the nature of the relevant market and on the perceptions of the relevant customers
Certainly not the law that the presence of an image of a well-known person on a product like a t-shirt can be assumed to make a representation that the product has been authorized
Rather to be passing off, a false belief engendered in the mind of the potential purchaser must play a part in their decision to buy the product
Clothing Designs
Fenty v Arcadia Group Brands
Facts: P took an action against D, O'Neills
Claimed D had passed off the three stripe logo as their own
Held: D had sufficiently distinguished themselves in the sportswear market in Ireland
Well-established and printed O'Neill's on their products
If a trader, attracted by design or susceptible fashion which its prominence creates, decides to copy or imitate, the mere copying of a design or the anticipation of a fashion or the taking advantage of market demand created by another's advertising is not of itself sufficient to support an action in passing off if the trader against whom the complaint is made has sufficiently distinguished their product so that no confusion is created
Gabicci v Dunnes Stores
P sought injunction against P's sale of particular sweater
Identical jumpers
Not the case of D following a fashion rend rather it concerned the sale of the sweaters which to all intents and purposes were the P's sweaters
No defence the goods could with diligence have been distinguished if no such examination likely to be made in practice
Switch selling
Confusion and the common course of trade
Traditionally P have to estab D passed off his goods or services as those of P in a common course of trade
Lego System v Lego Lemelstrich
: P was manufacturer of Lego toy
D was an Israeli firm involved in manufacture of patio and garden furniture
Recognised more expansive view of Passing off
Even in absence of common course of trade, accepted D's use of word in a different trading activity could conceivably 'restrict the P, in order to deprive him of, his ability to use his goodwill to launch other products of his own in that particular area or field'
Harrods v Harrodian School
Facts: Department store unsuccessfully sought to have D prevented from having adjective Harrodian in respect of its school service
lack of common course of trade
Customers of P would be incredulous if they were told Harrods had opened a preparatory school
More recent cases, for example those in character of merchandising e.g. rhianna case or irvine v talksport
have taken a more enlightened approach by attaching importance to indirect domino effects which may flow from false associations between P and D regardless of their separate business activities
Balancing act required