Mogul Steamship Co. v. McGregor, Gow & Co. -
1889 case that said there was no ability for the court to shoot down “unfair” activity:
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Couldn’t draw a one between fair and unfair, reasonable and unreasonable.
Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. -
Three meanings of the term “unfair competition”:
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A synonym for the tort of passing off,
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A generic name covering a range of causes of action available to a trader against various behaviours of competitors,
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The name of a new general cause of action to protect against “unfair” activity of a competitor causing damage.
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US SC protected the plaintiff’s exclusive right to report news of WWI to the American public.
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Without permission the defendant had presented info to its subscribers as news collected by its own means when it had in fact been reported first by the plaintiff and copied by the defendant.
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Defendant’s behaviour was classified as an unauthorised interference with the plaintiff’s business precisely at the point where profit was to be made.
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Trade-marks Act
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s. 7 No person shall… (e) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada.
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Above was found to be ultra vires of the federal government in MacDonald v. Vapour Canada Ltd. and hasn’t been reinstated exactly.
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We are therefore left with the second meaning of unfair competition from Moorgate Tobacco Co. Ltd. above.
CHAPTER 12: Passing Off Introduction The Common Law Tort Perry v. Truefitt -
First modern statement of the tort.
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A man is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practise such a deception, nor to use the means which contribute to that end.
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He cannot therefore be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe that they goods which he is selling are the manufacture of another person.
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Though the word deception is used, the tort requires no mental element on the defendant’s part.
Walker v. Alley -
One of the earliest Canadian cases.
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Granted an injunction against the defendants use of a sign of a golden lion in front of his store.
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Not the exact same, but similar enough so as to cause confusion.
A.G. Spalding & Bros. v. A.W. Gamage Ltd. -
Basis of the tort is a false representation by the defendant, must be proved in each case as a fact that the false representation was made.
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Common case is where the representation is implied in the use or imitation of the mark, trade name, or get-up with which the goods of another are associated in the minds of the public, or of a particular class of the public.
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Tort is based firmly on misrepresentation by the defendant about what itself is providing to consumers.
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Normally the defendant is passing off the plaintiff’s goods as its own.
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In this case, defendant is passing off plaintiff’s shoddy goods as though they were the plaintiff’s superior goods.
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Can come down to damage to goodwill.
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Hurt the business in lost sales, lost future sales, loss of reputation.
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Five Prong Test for Passing Off:
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5 Characteristics which must be present in order to create a valid cause of action:
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A misrepresentation
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Made by a trader in the course of trade
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To prospective customers of his or ultimate consumers of goods or services supplied by him
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Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence)
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Which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
Reckett & Colman Products Ltd. v. Borden Inc. -
Case of alleged source confusion by the defendant’s proposed use of a similar get-up for their product package.
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Three elements the plaintiff must prove in order to succeed:
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Must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the “get-up” such that the “get-up” is recognised by the public as distinctive specifically to the plaintiff.
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Must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that foods or services are the plaintiff’s.
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Must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.
Cadbury Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd. -
Plaintiff had a line of drinks, defendant was imitative, and cut into sales, but at no time actually tried to pass off or misrepresent itself or its product.
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Relevant provisions:
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Trade-marks Act, s. 7 No person shall …
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(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;
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(c) pass off other wares or services as and for those ordered or requested.
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(d) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to:
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(i) the character, quality, quantity or composition,
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(ii) the geographical origin, or
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(iii) the mode of manufacture, production or performance of the wares or services.
Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. -
Upheld the validity of s. 7(b), parliament has chosen to protect the goodwill associated with trademarks.
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Rounds out the statutory scheme of protection of all trade marks, the civil remedy which it provides in conjunction with s. 53 has a rational functional connection to the kind of trade marks scheme Parliament envisaged, in which even unregistered trade marks would be protected from harmful misrepresentations.
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