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Passing Off - Coggle Diagram
Passing Off
rational
to protect reputation of a business
alternative to trademark reputation
Polycell Products v O'Carroll
establish merchandise in a way to mislead public injuries goodwill of a business and benefiting from reputation already established
McMahon and Binchy
used as a strategy in trademarks in litigation
Elements
misrepresentation
O'Neill v O'Neills Footwear Dryer
- can be done by similar name, appearance, or same purpose - deliberate intention not necessary
Tattinger v Albev
selling non-alcoholic Champagne in Champagne Bottles - Champagne manufacturers concerned could damage their reputation
test - if average shopper who came across product in the environment likely to confuse them
Jameson
can't use own name in order to take advantage of goodwill or reputation of another
Packaging
Polycell Products v O'Carroll
product sold in distinct packaging, defendant similar product, similar packaging but different name - court - look at package shape, size, materials used, combination of colours, lettering, spacing of words
Jiff Lemon
tried to sell similar similar product in similar containers- passing off
Custard Cream Case
packaging quite different, doesn't matter if product similar when out of package - in contrast to
fig rolls
very similar packages passing off
design
Addidas v O'Neill
two stripes vs 3 stripes, in Ireland had sufficiently established and distinguished themselves
Allergen Inc v Ocean Healthcare
Botox and Botoina - court said confusion could arise in 3 ways -
visual similarity
(similar in name),
aural similarity
(phonetics),
conceptual similarity
(if invented words or not) - goods similar (presented similarly and same basic purpose) passing off
Harrods
can't confuse a school with a store
Irvine v Talksport
use image of F1 driver, court - could lead to confusion as people thought may be involved - companies can normally pay for endorsements from celebrities
McCambridge
critical point is if likely to lead to believing another made product - take into account customer perception and imperfect recollection - what is the likely customers impression
Fenty v Arcadia
T-shirt with Rhiana on it, court - people may think associated with Rhiana, the nature of market taken into account, can't always a tshirt with image is authorised, in this circumstance confusion likely, people likely to buy may not realise unauthorised
damage
Falcon Travel
travel agents working in Ireland, defendants a leisure group in UK began trading in Dublin, people called the wrong one, no injunction but damages granted as goodwill had been submerged - would need to spend money on advertising to make product distinct
diversion of sales or risk of injurious association
Clerk and Lindsell
writers - usually easy to show once establish misrepresentation
McCain Foods
and nightclub, no damage - neither attendnace nor books had reduced
Rhianna case
damage in loss of control
reputation or goodwill
older approach
Box Television
box not invented by colloquialism
An Post v Irish Permanent
saving cert used for 65 years by An Post and billions of pounds -
lenght and business were factors
Bernardin v Pavilion Properties
tried to imitate famouse nightclub in Paris, no passing off - club no business in UK, only in paris (didn't recognise reputation could cross country lines)
Sutherland v V2 Music
goodwill must exist at time of passing off
Starbucks PCCM v Sky
only available on flying into UK on planes - not sufficient
modern Irish Approach
DSG Retail v PC world
common words or phrases not protected unless given a unique spin - words PC not protect but 'PC world ' capable of having goodwill and reputation attached to it
Ad Lib Club v Grannville
- night club closed due to noise complaints, new night club opened years later with same name - held new people couldn't use same name
C & A Modes v C & A Waterford
goodwill can cause property - guiding criteria is if name of business is known by public in the area - could cross borders
Kilkenny Brewing Company
wanted to use name Kilkenny brewing company, Guinness already had drink called Kilkenny, Guinness successful - evidence of sales from other jurisdictions, marketing campaign, people asked before it even launched in Ireland
remedies
injunction
damages
account of profits -
McCambridge v Brennan Bakeries
Tests
5 stage test
3 stage test
approved test in Ireland
McCambridge v Joseph Brennan Bakeries
endorsed 3 stage test from
Reckitt and Coleman Products v Bordan
3 stage test
existence or reputation of goodwill in claimant's product
misrepresentation leading to confusion between offending product and claimants product
whether damage to goodwill or reputation has been caused
no element free standing - look at overall question
Tort
usually heard at interlocutory stage
most cases considered at interlocutory stage
Miss World Limited v Miss Ireland
- function of court to determine if plaintiffs have raised a
fair and bona fide question to be tried
, if refused injunction could
damages be adequate remedy
, if injunction wrongly granted could damages be sufficient
balance of convenience
survey evidence
Galway Free Range Eggs
if no contradictory evidence should be admissible