Passing Off - Required Elements

Required Elements

There are three elements, often referred to as the Classic Trinity, in the tort which must be fulfilled. In Reckitt & Colman Products Ltd v Borden Inc 1 All E.R. 873 Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnick B V v J Townend & Sons (Hull) Ltd AC 731, 742 (HL) (the Advocaat Case) to three elements:

1. Goodwill owned by a trader
2. Misrepresentation
3. Damage to goodwill

Plaintiffs have the burden of proving goodwill in its goods/services, get-up of goods, brand, mark and/or itself per se.

The Plaintiff also has the burden of proof to show false representation (intentional or otherwise) to the public to have them believe that goods/services of Defendant are that of the Plaintiff; thus, there must be some connection between Plaintiff’s and Defendant’s goods/services/trade. They must show likelihood and/or actual deception/confusion in the public. Deception/confusion, however, does not consider a ‘moron in a hurry’. (See Morning Star Cooperative Society v Express Newspapers Limited and Newsweek Inc. v. British Broadcasting Corp., R.P.C. 441 by Lord Denning.) It is the Court's duty to decide similarity/identity of the marks/goods/services the criterion of which often fall under three elements: aural, visual and conceptual similarity (often applied in trade marks infringement cases).

In relation to the element of damage to goodwill, there may be loss/diversion of trade or dilution of goodwill. The Plaintiff need not prove actual or special damage; real and tangible probability of damage is sufficient. This damage should however be reasonably foreseeable. It is insufficient to simply show likelihood/actual deception and/or confusion.

Ultimately, the Court must use common sense in determining the case, based on evidence and judicial discretion, and not witnesses.

Disclaimers may be insufficient to avoid passing-off or cause of action (See Asprey and Garrard v. WRA (Guns) Ltd FSR 30.) However, this was expressed in the dicta of the decision.