Trademarks and Passing Off Law: Qs) Discuss critically how the law of passing off protects the descriptive and the functional? Criticise and comment on the law

This assignment will critically assess how the law of passing off protects the functional and the descriptive. This assignment will also look at the extent of this protection, and this will be achieved through a detailed examination of the case law in this area.

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To assess how passing off protects the functional and descriptive it is important to first attempt a definition of passing off. The action for passing off has so often adapted to commercial changes that formulating a precise and accurate statement in a short form is intensely difficult and indeed creating a long accurate statement is also very difficult.   However the case of Reckitt & Coleman Products v Borden Inc, Lord Oliver reduced the elements to the trinity of confusion leading to deception, and damage. Although in the same case Lord Fraser indicated an entirely different test, which was held in subsequent litigation, should be applied alongside Lord Oliver’s test. Passing off has in essence two functions, these are the protection of the trader against the unfair competition of his rivals, and the protection of consumers who would otherwise be confused as to the origins or nature of the goods or services, which they are offered. As copyright protects creativity and patents protect an invention, passing off protects the acquired reputation; the result of prolonged human efforts.

Passing off seeks to protect not the mark, but the reputation, represented by the mark. That is to say it seeks to protect the attractive force that brings in custom ... it has the power of attraction sufficient to bring customers home to the source from which it emanates. An injunction will be granted against 'a person, competing in trade, who seeks to attach to his product a name or description with which it has no natural association so as to make use of the reputation and good will which has been gained by a product genuinely indicated by the name.'  Thus, protection is not of the mark per se but that which is represented by the mark; representation as to the 'source' of the product 'genuinely indicated' by the trademark. It follows that the name or description, representing the mark, must be sufficiently distinctive so as to have a causative impact on customer behaviour.   The damage that can be caused by passing off, and that which the law seeks to protect, are risks that the claimant may be exposed to by its consumers or lost opportunities to expand geographically or into related produces or loss of licensing opportunity, although the court tend to look long and hard at such a type of claim.
In Parker Knoll v Knoll International the English furniture makers acquired their name and mark from a kind of spring invented in the 1930, by Wilhelm Knoll of Stuttgart. A nephew of Knoll who set up Knoll International in the US wished to enter the UK market. The House of Lords restrained the US-based business from using the name 'Knoll' holding that Parker Knoll had acquired a secondary meaning in the UK. In contrast, in Efax.com Inc v Mark Oglesby   an American Company using 'efax.com' as their domain name with allegedly 5000 customers in the UK was refused an injunction against 'efax.co.uk'. Parker J observed that 'efax' was essentially descriptive and an example of generic e-language terminology that crept into common use. He held that confusion, if any, caused by the similarity of names resulted from the descriptive e-language and not from any misrepresentation on the part of the defendant.

Next we must consider misrepresentation as this is one of the key findings in an action for passing off. Misrepresentation is the intentional or innocent 'misappropriation' by the defendant of the claimant's reputation in a way that is likely to cause confusion in the minds of the purchasing public. Misrepresentation for the purposes of the law may also be a true statement which subsequently becomes false and a statement which, while literally true, nonetheless causes its recipient to be misled.
Confusion is used not in the sense of not knowing whose products the public is buying but in the sense that the misrepresentation by the defendant causes (deceives) the public into thinking that the goods or services of the defendant are in fact those of or associated with the claimant.   In Reckitt & Colman v Borden , Reckitt & Colman had for many years sold lemon juice in plastic containers resembling natural lemons in colour and shape. Borden started selling lemon juice in similar containers but, in order to distinguish their product and avoid confusion, Border attached a suitably distinctive label to their container. An injunction was granted against Borden to prevent them from marketing their product in any container so nearly resembling the JIFF lemon shaped container. As Lord Oliver explained ... where the article sold is conjoined with an object ... of a shape or configuration which has become specifically identified with a particular manufacturer, the latter may be entitled to protection against the deceptive use in conjunction with similar articles of [sic] objects fashioned in the same or a closely similar shape ... The deception alleged lies not in the sale of plastic lemons ... but in the sale of lemon juice ... in containers so fashioned to suggest that the juice ... emanates from the source with which the containers of those particular configurations have become associated in the public mind.

The protection afforded by the law of passing off was extending in the case of Edmund Irvine v. Talksport Ltd, in which it was acknowledged that a false representation by a trader that its product or service are endorsed by an individual may give rise to a cause of action in passing off. As the judge, Laddie J., noted, this is an important point of principle, as it recognises that in some circumstances the tort of passing off may give one an enforceable right in one's own name and image. Alarmingly though, Irvine's remedy for this infringement of his rights was a sum in damages that fell far short of the amount he would normally receive from an endorsement. This decision appears to run contrary to the earlier decision of Harrods v. Harrodian School, in which Millet LJ held that: "It is not in my opinion sufficient to demonstrate that there must be a connection of some kind between the defendant and the plaintiff, if it is not a connection which would lead the public to suppose that the plaintiff has made himself responsible for the quality of the defendant's goods or services."

The ambit of passing off was once again extended even further in the case of BT Plc v One In A Million. In this case the defendant registered a large number of internet domain names involving the names or trade marks of well-known companies, without their consent. At the time of litigation, none of these domain names had been used as active sites, but rather the defendant accepted that part of his scheme was to use his "blocking registration" to sell the name on to its "legitimate" user or threaten to use it or sell it on to third parties. The well-known companies were objecting therefore to the mere registration of domain names without any active use. The Court of Appeal reacted to this "unfair competition" by finding that the case fell both within standard passing off and the doctrine of instruments of deception. The feeling of the court is that such "dishonesty" by the defendant needed to be stopped and that the tort of passing off could be adapted to meet this need.

To return to the question as to how the tort of passing off protects the descriptive and the functional, it has been demonstrated through the case law, that the law increasingly recognises the need to protect the descriptive and the functional. This, however is not a statement that has always been true, and it is only in recent years that we have seen the law of passing off extended in such a way as to protect the descriptive and the functional.

Bibliography

Cases
Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik [1984] FSR 413
American Cyanamid Co v Ethicon Ltd [2001] 1WLR 194
Bollinger v Costa Brava Wine co. Ltd [1960] ch.262
BT Plc v One In A Million [1999] F.S.R. 1
Chelsea Man Menswear v Chelsea Girl Ltd [1987] RPC 189
Edmund Irvine v. Talksport Ltd [2002] EWHC 367
Efax.com Inc v Mark Oglesby Masons Computer Law Reports [August 2000].
Evren Warnink BV v Townend [1979] AC 731
Frank Reddaway & Co Ltd v George Bamham & Co Ltd [1896] AC 199
Harrods v. Harrodian School [1996] R.P.C. 697, 713
Havana Cigar v Oddenino [1924] 1 Ch.179
IRC v Muller & Co's Margarine [1901] AC 217
Neutrogena v Golden [1996] RPC 473
Parker Knoll v Knoll [1962] RPC 243
Reckitt & Coleman Products v Borden Inc [1990] RPC 340 at 499
Sony K K v Saray Electronics (London) Ltd [1983] FSR 302
Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501
With v O Flanagan [1936] Ch 575
Books
Bainbridge D, (2002) Intellectual Property Law, Harlow, Fifth Edition
Cornish W, (2003) Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights , Sweet and Maxwell, Fifth Edition
Phillips J & Firth P, (2001) Introduction to Intellectual Property Law, Butterworths Lexis Nexis, Fourth Edition
Torremans P, (2005) Intellectual Property Law, Oxford University Press, Fourth Edition

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