Elements of Passing Off: Reputation Protectable Goodwill Shared Goodwill Erven Warnink -
Plaintiff was one of a number of traders dealing in advocaat in the UK.
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Defendant’s version, also called advocaat, was not made according to the true recipe.
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Made with wine not spirits.
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Judge held that defendant couldn’t use the name because it wasn’t by definition advocaat.
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This misrepresentation would harm the goodwill of any trader dealing in the true substance by directing custom.
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Confusion was not between different sources for the same wares, but between the different types of wares called, inaccurately, by the same name.
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Known as “extended passing off”.
Institut National des Appellations d’Origine des Vins et Eaux-de-Vie et al. v. Andres Wines Ltd. et al. -
Plaintiff is a national organisation established by French law.
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Duty is to regulate the areas and conditions of production and sale of wines and spirits bearing controlled appellations of origin.
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Defendants are companies duly incorporated in Canada selling wines under various names, some of which include the word “champagne”, in particular “Canadian Champagne”.
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Facts:
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Not all producers in the champagne region are allowed to use the name, but those who are permitted share equally in the benefits derived from the good will.
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Canadian law allows the use of the word champagne as long as there is no misrepresentation to the public.
Dairy Bureau of Canada v. Annable Foods Ltd. -
Defendant had marketed a drink that replicated whole milk, but with less fat.
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Contained fresh milk and skin milk powder and was homogenized.
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Marketed as Homolite 1% low fat drink, as it couldn’t be called milk.
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Tried to sue for the use of the term “homo”.
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Not a name of a product, but a process, could be used for other products like peanut butter, etc.
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Plaintiffs found to not have a case for likely confusion, given the efforts the defendant made to differentiates its product in the marketplace.
Foreign Goodwill Common Law Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. et al. -
Orkin was well-known and established company in the US, no business in Canada.
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Pestco used Orkin’s name in telephone directories, and would say they were Orkin when they showed up to work but did business under the name Pestco.
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Held that it was passing off.
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Goodwill is basically reputation - if you have reputation, you have goodwill, regardless of whether there is a business presence there.
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Generally where there is such confusion (in defendant’s jurisdiction), there is goodwill.
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Defendant had knowingly misrepresented itself, presume confusion.
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Was there actual damage?
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Loss of control of exploitation rights, there was clear evidence that Orkin intended to commence business in ON, although intent was not an absolute element.
Statute Enterprise Rent-A-Car Co. v. Singer -
American plaintiff that had operated in the US for a long period of time.
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Defendant, upon hearing of plaintiff’s intention to enter into Canadian market, changed name to Enterprise from Discount.
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Orkin was heavily relied on.
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Many Canadians that had used Enterprise in the US, had a 1-800 number that Canadians could use.
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No finding of advertising “spillover” from the US to Canada.
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Defendant argued that to use s. 7(b), must show that the trade mark was known in Canada under s. 5.
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Court found that no compliance with s. 5 required when s. 7(b) is in action as in Asbjorn.
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Ruling was affirmed, found that s. 7(b) requires nothing different than the common law as regards foreign reputation.
Non-Commercial Goodwill Polsinelli v. Marzilli -
Trudeau liberal case - Liberal party seeks injection against candidate who is not affiliated with the party and promotes himself to be a Trudeau Liberal.
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The injunction was denied, passing off does not extend to matters other than commercial trade or property.
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Additionally, the court was reluctant to inject itself into the election process.
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Doesn’t work in purely personal matters.
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Du Boulay v. Du Boulay - can’t prevent someone from assuming a family name.
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Day v. Brownrigg - can’t prevent someone from calling their house the same name.
Indicia General Proof of Distinctiveness Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. -
General proof of distinctiveness
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Defendant copied same tray as plaintiff, using lighter material.
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Plaintiff alleges passing off.
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Whether the shape of an item (desk tray) indicated a “single source”, i.e. that it was distinctive.
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Court held that the shape of the tray was not unique enough to show a single source, it was simply a tray in the shape of a tray that every supplier had.
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Held, essential to “distinctiveness” is that the product acquired a secondary meaning; none of the suppliers had made any of the trays distinctive.
Ray Plastics Ltd. et al. v. Dustbane Products Ltd. -
Plaintiff manufacturer of “Snow Trooper” snowbrush/ice scraper/squeegee all-in-one.
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Appearance was uncommon and enjoyed very successful sales.
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Defendant produced one that was nearly identical.
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“Element of reputation” … whether get-up or distinguishing guise has a secondary meaning.
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“As to distinctiveness, the rules is that the more distinctive a product, the more easy one can establish reputation.”
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Court found intentional copying.
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When something is intentionally copied, there is a presumption that the product has a secondary meaning, i.e. a reputation.
Robinson v. Bogle - the Belleville College Case -
Defendant used the name of plaintiff that was colloquially used but not its official name.
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Held that public use of a name has never been held to attach the designation to the business.
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ie not grounds for distinctiveness.
Secondary Meaning Descriptiveness Reddaway (Frank) & Co., Ltd. v. George Banham & Co., Ltd. - (the Camel Hair case) -
The descriptive term “came hair belting” became, over time, to be understood by the public as goods manufactured by the plaintiff.
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“Camel hair belting” gained a secondary meaning that the goods originated with the plaintiff alone.
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A descriptive word can be distinctive because it shows origin.
Genericness Grand Hotel Company of Caledonia Springs, Ltd. v. Wilson -
Caledonia Springs Water - bottled water, another supplier comes to nearby springs and also sells Caledonia Spring Water.
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Held that it was okay so long as there is no link with first supplier - can distinguish products through drawings and other indicia.
Get-Up – Packaging, Premises Reckitt & Colman Products Ltd. v. Borden Inc. -
HoL moves away from 5 part test.
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Jif lemon shaped container containing lemon juice; defendant puts out similar product in lemon shaped container.
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Held the lemon shows origin, it has a secondary meaning , like in the camel hair belting case, that the goods originate solely with the plaintiff manufacturer.
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The lemon-shaped containers indicate not just lemon juice, but Jif lemon juice.
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The labels on the neck of the bottle and the insignia were not enough to distinguish the two products because “the essence of the action for passing off is a deceit practiced upon the public and it can be no answer, in a case where it is demonstrable that the public has been or will be deceived, that they would not have been if they had been more careful, more literate or more perspicacious.”
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The public is essentially buying it from a shelf, and they will look at the plastic lemon shape and not the small label.
Get-Up - Wares Eli Lilly and Co. v. Novopharm Ltd. -
Contra to Ciba-Giegy
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Survey evidence did not support “claim of association between the capsule colours being the same and capsule source being the same, very little evidence of an association between Prozac name and the actual colours of the Prozac capsule, and very little evidence of an association between the capsule colours green and pale yellow and the Prozac name.”
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The defendant chose to use the same capsule colours as the plaintiffs, and they do so for a marketing reason but that reason is to identify the medicine as one that is therapeutically equivalent to the defendant’s product, not to represent to the public that their products are the plaintiffs.
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Misrepresentation can exist without an intention to misrepresent.
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However, as noted above in this case not only was there no intention to misrepresent, but the capsule appearance does not in fact play such a role.
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Plaintiffs did not prove that the capsule appearance was a distinguishing feature of its product.
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Also likelihood of confusion? No evidence of actual confusion.
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Patients generally don’t care what brand they use.
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They know that generics are used, and can easily find out according to label on vail if they are concerned.
Range of Indicia Verbal -
Words may be generic or descriptive, but if secondary meaning is found in the words, they are protectable, albeit weakly.
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Coined words or arbitrary choices result in strong marks.
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Examples:
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Office Cleaning Services Ltd. v. Westminster Office Cleaning Association was not actionable.
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Personal names can be: J&A McMillan Ltd. v. McMillan Press Ltd.
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Assumed names as well: Landa v. Greenberg, where “Aunt Naomi” was protected as a name for a kids’ column.
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Stag names too: Hines v. Winnick where “Dr. Crock and His Crackpots” was protectable.
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Letters or numbers: HQ Networks Systems Inc. v. HQ Office Supplies Warehouse Inc.
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Joseph v. Lee “501 Video” protected against “501 Arcade”.
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Pizza Pizza Ltd. v. 528635 Ontario Inc. where 1111 was part of a delivery phone number.
Visual -
All manner of get-up may acquire secondary meaning:
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labels, devices, pictures, premises, shapes of wares, and so on.
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Colour combinations may have trademark status, as in Visa International Service Association v. Visa Motel Corp.
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Visa credit financing colours were found to have trademark status.
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Doubtful one colour could qualify for trademark protection because of the “exhaustion of colours” theory in Dumont Vins & Spritueux Inc. v. Celliers du Monde Inc.
Fictional Character -
These are more conceptual marks.
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Shaw Brothers (Hong Kong) Ltd. v. Golden Harvest (HK) Ltd. producer of a martial arts film series had a specific character, defendant tried to feature the same character with name, accoutrements, costume and distinctive sounds.
Loss of Reputation Abandonment Ad-Lib Club Limited v. Granville -
Plaintiff sought interlocutory injunction against the defendant for allegedly passing off its discotheque night club.
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If defendant was able to open club with that name, good will from previous club would be gone for good.
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No other reason to pick that name, no evidence filed.
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Injunction granted.
Becoming Generic Institut National des Appellations d’Origine des Vins et Eaux-de-Vie et al. v. Andres Wines Ltd. et al. -
Lawsuit over the use of the word “champagne”.
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Defendants claim that over the years the word has become generic.
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Companies from Champagne have had a part in diluting the word, marketing Brazilian and Argentinean wines as champagne in those countries.
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Champagne in the dictionary is frequently referred to as “effervescent wine”, sometimes from Champagne or elsewhere.
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Court, however, says that despite the considerable onslaught, the word has resisted the pull and in their opinion, it has not yet fallen into complete generic use.
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Now has a secondary meaning, has become “semi-generic."
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