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What are the elements of passing off?

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(3) Damage to goodwill

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

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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 Plaintiffs 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 [1979] and Newsweek Inc. v. British Broadcasting Corp., [1979] 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 falls under three elements: aural, visual and conceptual similarity (often applied in trademarks 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 [2002] FSR 30.)

However, this was expressed in the dicta of the decision.

Extended passing off- One of the instances where passing off is actionable is the extended form of passing off, where a defendant’s misrepresentation as to the particular quality of a product or services causes harm to the plaintiff’s goodwill.

An example of this is Erven Warnink V J Townsend & Sons (Hull) Ltd [1979] AC 731, in which the makers of advocate sued a manufacturer of a drink similar but not identical to advocate, but which was successfully marketed as being advocate.

The extended form of passing off is used by celebrities as a means of enforcing their personality rights in common law jurisdictions. Common law jurisdictions (with the exception of Jamaica) do not recognize personality rights as rights of property. Accordingly, celebrities whose images or names have been used can successfully sue if there is a representation that a product or service is being endorsed or sponsored by the celebrity or that the use of the likeness of the celebrity was authorized when this is not true.

Trademark Infringement And Passing Off – Trademark is the identification mark of any company or organization. A customer relates any trademark with the quality of products and reputation of the company that is using it.

It is a distinctive name, word, phrase, symbol, logo, design, image, or a combination of these elements that identifies a product, service or firm that has been legally registered as the property of the firm. Trademarks grant the owner the right to prevent competitors from using similar marks in selling or advertising.

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