Passing Off: An Uncertain Remedy Peter Charleton & Sinéad Reilly Source of Image: National Archives

Passing Off: An Uncertain Remedy How is it different to trade mark protection? What are its elements? How is such an account to be approached? Questions to consider Does it require proof of deception? Why can a winning plaintiff choose an account of profits over damages? How far can it be pushed? Passing Off: An Uncertain Remedy (Fordham Annual Conference, April 2015)

Passing Off: Elements of the Tort Goodwill Misrepresentation Damage Passing Off: An Uncertain Remedy (Fordham Annual Conference, April 2015)

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)

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)

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)

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)

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 attention-grabbing then true passing off is not involved.” (Hazel Carty) Passing Off: An Uncertain Remedy (Fordham Annual Conference, April 2015)

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)

Account of Profits Anomaly UK Approach Irish 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. 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)

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)