Reputation
Reputation


Reputation means that an association has been
established between the mark and the source
It does not mean that the source has a “good”
reputation
The quality of the wares is left for the consumer to
judge
 The law protects the association between the mark
and the wares

Reputation

It must be established that consumers have, by
reason of the appearance of the goods of the
plaintiff, come to regard them as having some
one trade source or provenance, whether
manufacturing or marketing,

Roche Products Ltd. v. Berk Pharmaceuticals Ltd., [1973] R.P.C.
473 (C.A. )
Reputation

. . .it matters not that [the consumers] have no
idea at all of the identity of that trade source or
provenance.


Roche Products Ltd. v. Berk Pharmaceuticals Ltd., [1973] R.P.C.
473 (C.A.)
This is sound in principle – so long as there is in
fact one source and consumers associate the
mark with a source, the “virtuous circle” will
function
Establishing Reputation

It may be helpful to think of there being two
elements: to establish a reputation the mark
must be

Distinctive
That is, capable of identifying a source
 Note that it is possible for a mark which is not inherently
distinctive to acquire distinctiveness through long
association



Eg Molson Canadian
Associated with a single source
Survey Evidence

Reputation is very often established through the
use of consumer survey evidence


See eg Petals v Winners
But this is not always essential

See Ray Plastics
Survey Evidence

The position of Brushcraft is that there was
simply no evidence to support the trial judge's
conclusion that the Snow Trooper had
established any reputation or that its get-up had
acquired any secondary meaning. In particular,
there was no evidence from consumers or
marketing experts and no surveys.

See Ray Plastics
Inherent Distinctiveness

. . .the rule is that the more distinctive a product,
the more easily one can establish reputation.

Ray Plastics
The reference to “product” is because this is a case
of “get up” where the shape of the product itself is
distinctive
 The same applies to marks

Intentional Copying



Copying of a distinctive mark can give rise to an
inference of reputation: Ray Plastics
"If he imitates the other's trademark or tradename
knowingly and acts in other ways to convey the
impression that his business is associated with the
other, the inference may reasonably be drawn that
there are prospective customers to be misled."
The inference of "prospective customers to be
misled" means that the product had a reputation,
that the get-up had secondary meaning.
Intentional Copying

Notice that intent to confuse is not an element
The only element is likelihood of confusion on the
part of the public
 Intent to confuse by the defendant may support the
inference that the public would in fact be likely to
confused

Reputation is Essential


He stated that only one-half of the retailers recalled
the brand and amongst consumers, it had no more
awareness than a fictitious brand. . . . neither the
consumer nor the retailer could consistently identify
the plaintiff.
A plaintiff need not be famous in order to enjoy the
protection of its goodwill. However, there must
exist some reputation with at least a segment of the
public. Here, the volume of sales was also so small
as to fail to establish any reputation or goodwill.

Petals
Reputation inferred from
Similarity

In this case the defendant’s mark was
confusingly similar to the plaintiff’s mark


Why can we not draw the inference that the product
had a reputation, as in Ray Plastics?
This case illustrates that reputation and
confusion are distinct elements
Reputation and Confusion


Ray Plastics shows that reputation and
confusion are related
Petals shows that they are distinct
Descriptive Marks

Once it is established that these words are both
the name of a product and descriptive of that
product, the difficulty of establishing a passing
off merely by the use of those words in relation
to the product is extreme.


Canadian Shredded Wheat v Kellogg
Why?
Generic Marks

If the mark is the name of product

It is not registrable under the Trade-marks Act


S.12(1)(c)
It essentially impossible to establish reputation
in a passing off action
Descriptive Marks


Under the Trade-marks Act a mark which is
descriptive can only be registered if it has
acquired “distinctiveness”
In order to establish reputation in a passing off
action it is necessary to establish “secondary
meaning”

“Secondary meaning” is the meaning of the
descriptive term as a mark, in addition to its meaning
as a description
Reddaway v Banham

Is the “camel hair belting” case an example of
A generic mark?
 Or a descriptive mark?

Oxford Pendaflex

Issues

1 Did the trial judge err in finding that the trays
originated from several sources


This finding implies that no single source developed a
reputation
2 Is it necessary to show that consumers associated
the mark a particular known source

Or is it sufficient if consumers associate the mark with a
single source, though they do not know the source
Oxford Pendaflex

Second issue

It is to be noted that in the first part of the observation
of Russell L.J. there seems to be a requirement that the
purchasing public be left with the impression that the
goods of the defendant are the goods of the plaintiff.
The next part of the paragraph makes it clear, however,
that all that need be left in the mind of the purchaser is
the idea that all of the pills (in that case, by reason of
their shape, size and mode of marking), came from "one
trade source". There is in that standard no need for the
plaintiff to take the next and difficult step of showing
that the customer must have known or believed that the
only source of the product was the plaintiff. . . .
Oxford Pendaflex

First issue


The mark must in fact be distinctive of a single source
In the end the trial Judge concluded, and rightly if I may
say so, that all these stacking trays had a common origin
in the aforementioned American manufacturer, that
nothing had been adapted or created by any of the
suppliers, including the appellant, which made any of
these trays distinctive, and consequently no secondary
meaning had been acquired by the product of the
appellant in the market.
Extended Passing Off

Erven Warnick carves out an exception to the
rule that the mark must be distinctive of a single
source

Is the exception justified?
Limits of Passing Off

“A defendant, however, does no wrong by
entering a market created by another and there
competing with its creator.”

Cadbury Schweppes
Limits of Passing Off

The line may be difficult to draw; but, unless it is
drawn, competition will be stifled. The test
applied by Powell J in the instant case was to
inquire whether the consuming public was
confused or misled by the get-up, the formula or
the advertising of the respondent's product into
thinking that it was the appellants' product. And
he held on the facts that the public was not
deceived.

Cadbury Schweppes