Passing Off: An Uncertain
Remedy
Peter Charleton
&
Sinéad Reilly
Source of Image: National Archives
Passing Off: An Uncertain Remedy
How is such an account
to be approached?
Why can a winning
plaintiff choose an
account of profits over
damages?
How is it different to
trade mark protection?
Questions
to
consider
What are its elements?
Does it require proof of
deception?
How far can it be
pushed?
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
2
Passing Off: Elements of the Tort
Goodwill
Misrepresentation
Damage
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
3
Passing Off: Elements of the Tort
McCambridge Ltd v Joseph Brennan Bakeries
(Irish High Court)
“it would take more care and attention than… it is
reasonable to attribute to the average shopper for
him or her not to avoid confusion between the two
packages when observed on the shelf, especially
when these are placed adjacently or
even proximately so.”
(Peart J)
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
4
Passing Off: Elements of the Tort
Moroccanoil Oil Israel Ltd v Aldi Stores Ltd (UK
High Court)
– Aldi “living dangerously” with “cheeky packaging”
– Bringing the requirement of deceit in through the
back door?
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
5
Unimagined Worlds
• Right of publicity
– How far does this go?
– Catchphrase, impersonator, lookalike, sound-alike,
voice
– Evocation of celebrity’s identity?
– Vanna White: a step too far?
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
6
Unimagined Worlds
Robyn Rihanna Fenty v Arcadia Group Brands
Ltd (t/a Topshop) (UK High Court)
“the sale of this image of this person on this garment by
this shop in these circumstances”
(Birss J)
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
7
Unimagined Worlds
“if [the requirement for a false endorsement] is
applied in a vague way to mean a false implication
that there is “some association” or financial link
between the celebrity and the advertised product or
service or indeed if the requirement for a
misrepresentation is dropped in favour of protecting
against unpaid use of the celebrity for attentiongrabbing then true passing off is not involved.”
(Hazel Carty)
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
8
Instruments of Deception
British Telecommunications v One In A
Million (UK Court of Appeal)
“… If it be the intention of the defendant to
appropriate the goodwill of another or enable
others to do so, I can see no reason why the
court should not infer that it will happen, even if
there is a possibility that such an appropriation
would not take place.”
(Aldous LJ)
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
9
Account of Profits Anomaly
UK Approach
• Woolley & Timesource Ltd v
UP Global Sourcing UK Ltd
& The Lacmanda Group
Limited
– Impractical to carry out an
analysis as to how much
profit was made through the
attribution of the brand and
how much of that profit
would probably have been
made anyway.
Irish Approach
• McCambridge Ltd v Joseph
Brennan Bakeries
– Conducting such an
assessment avoids unjust
enrichment & a penal
approach
– Set out series of propositions
for future cases
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
10
To sum up…
The tort is all about what is fair: you build up
goodwill, someone else makes their product
look like yours; they steal, let’s be nice, it might
be an accident, the plaintiff’s attributes; there is
confusion, at least; the packages are produced
to the judge and it is her or his educated
response to facts that drives the definition of
the remedy: perhaps more so than the law.
Passing Off: An Uncertain Remedy
(Fordham Annual Conference, April 2015)
11