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Passing Off D - Coggle Diagram
Passing Off D
Overview: Protection for unregistered trademarks TOC p.3 Notes P. 15
Ingredients, stated by Lord Oliver in Reckitt & Colman v Borden TOC p.3 Notes P. 15
•the defendant, by using this symbol, has made a misrepresentation in the course of trade to customers
• the claimant has suffered or will suffer damage to their business goodwill as a result
• their name, trade mark, logo or other visual symbol has, through use, acquired a reputation which has generated business goodwill (it is the only means available to protect unregistered trade marks and other symbols used in the course of trade.)
• The onus is on the claimant to prove each element of the definition
• the tort of passing off = the common law means of protecting trade marks TOC p.30, Notes 84
Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc [1990] TOC p.31 Notes 85
• second, the trader must demonstrate that the defendant has made a misrepresentation that led or is likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the claimant TOC 31, Notes 85
• The other “definition” Lord Diplock in Erven Warnink BV v Townend & Sons [1979] AC 731. This includes a 5 point list, claimant must establish that there has been, Toc 31, Notes 85
• to the defendant’s prospective customers or ultimate consumers TOC 31, Notes 86
• which is calculated to injure the business of another TOC 31, Notes 86
• made by a trader in the course of trade TOC 31, Notes 86
• and which causes actual damage to the claimant’s goodwill or is likely to do so. TOC 31, Notes 86
• a misrepresentation TOC 31, Notes 86
• it may be possible for two undertakings to acquire a reputation simultaneously, so that neither can stop the other from using the name
• it is possible for goodwill to continue for a considerable period of time (40 years) even though there has been limited use of the claimant’s mark. TOC p32, Notes 86-87
Lord Oliver states that first, a trader must establish that they have a goodwill or reputation attached to the goods or services TOC 31, Notes 85
dilution