Elements of Passing Off: Misrepresentation Factors Institut National des Appellations d’Origine des Vins et Eaux-de-Vie et al. v. Andres Wines Ltd. et al. -
The elements of the common law tort of passing off are”
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Reputation or goodwill in the product
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A misrepresentation leading to or capable of leading to deception
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That such misrepresentation is likely to lead to damage to that goodwill or reputation.
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As said in Spalding & Bros. v. Gamage Ltd.
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The basis of a passing off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. The more common case is, where the representation is implied in the use of a mark, trade name, or get-up. In such cases the point to be decided is whether the defendant’s use of such mark, name or get-up is calculated to deceive.
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Person buying “Spanish Champagne” would not think it was a wine produced in France, but what he may very well think is that he is buying the genuine article, real Champagne.
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This is the sort of deception the judge had in mind in the British Sherry case.
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Detailed consideration left the court to conclude that Canadian champagne was a distinct Canadian product not likely to be confused with French champagne.
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“Canadian” was in same size, etc., as “Champagne”, marketed in different areas of the stores, listed differently on menus, etc.
McCulloch v. Lewis A. May (Produce Distributors) Ltd. -
Plaintiff was a popular radio broadcaster of a children’s show.
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Also made recordings, public appearances, and wrote children’s books, all under the pseudonym “Uncle Mac”.
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Defendant started selling “Uncle Mac’s Puffed Wheat”, breakfast cereal aimed at the children’s market with references on the packages to characteristics of “Uncle Mac”.
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Passing-off case failed.
Krouse v. Chrysler Canada Ltd. -
Plaintiff was professional football player, sued Chrysler because they had used a recognizable photo of him on its advertising device, “the Spotter”.
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No one would have thought he made it.
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Wasn’t in competition with anything the plaintiff would have been selling.
Young v. Scot Young Ltd. -
“Passing off is limited to the case of competition and this is not such a case.”
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Plaintiff was a well-known writer/broadcaster in Toronto and the defendant was a window-cleaning service.
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Statute
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s. 7(b) of the Trade-marks Act does not require the plaintiff and defendant to be involved in a common commercial field.
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Factor of importance, but no rule that passing off demands a common field of activity.
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Krouse and Young both dealt with personality, or publicity rights of celebrities.
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Now covered under legislation and the development of the tort of appropriation of personality.
The Test Person Ciba-Geigy Canada Ltd. v. Apotex Inc. & Ciba-Geigy Canada Ltd. v. Novopharm Ltd. -
Case involves determining, in the context of a passing-off action, who the customers of pharmaceutical laboratories manufacturing prescription drugs.
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Do those customers consist only of physicians, dentist and pharmacists or are the patients to whom the drugs are dispensed also included?
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“The person chiefly concerned is the competitor affected by the unfair act”, frequently in fact the first party affected by the practice or aware of it.
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However, “it should never be overlooked that unfair competition cases are affected with a public interest.”
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So that “the purchasing public may to be enticed into buying A’s product when it wants B’s product.”
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“The power of the court in such cases is exercised, not only to do individual justice, but to safeguard the interests of the public.”
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“Who is to be confused?”
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Court first mentions the ordinary customer: “you must deal with the ordinary man and woman who would take ordinary care in purchasing what goods they require and, if desiring a particular brand, would take ordinary precautions too see that they get it.”
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“Ordinary precautions” will depend on the product they are buying - more careful for luxury product than for a super market product.
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Court doesn’t like Lord Diplock’s “ultimate consumer” in Erven Warnink as confusion must be avoided in the minds of all customers, direct or indirect.
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Says it is the public that needs to be confused: a manufacturer that wishes to succeed in a passing off action must usually show that its product has acquired a secondary meaning with its customers, the public, and that the competing product is likely to create a risk of confusion in the public mind.”
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At end of judgment, court says well-established rule that the final consumer of a product must be taken into account in determining whether the tort of passing off has been committed.
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Links patient’s right to choose what brand of drug they take as a reason to include them as the “who is to be confused”.
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To exclude them “from the passing off action on the pretext that they have no choice as to the product is quite wrong.
Mr. Submarine Ltd. v. Emma Foods Ltd. -
The standard of confusion: “not that a person fully familiar with the detailed operations of the plaintiff and therefore capable of at once distinguishing those of the defendant from those of the plaintiff but rather that of a person who has a vague recollection of understanding of the business product of the plaintiff.”
Types of Misrepresentation Consumers Distributing Co. v. Seiko Time Canada Ltd. -
Whether a Seiko watch had an international warranty and sold by authorised distributor.
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Once parallel importer made a statement that it was not an authorized distributor and thus had no warranty, and that you are not getting any more than just a watch.
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Courts said once that disclaimer was made, there was no confusion because purchase knew that was all they were getting.
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Use of disclaimer can negate misrepresentation.
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It still may be a taking, but passing off does not depend on misappropriation.
Disney Case -
“Fantasyland” in West Edmonton Mall held to be passing off.
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Confusion? Yes, even with very low confusion of ~5%.
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Court said there was confusion by utilizing as a measure of confusion (content of confusion) that the public thought Disney had “authorised or consented” to the name use; note this deviates from the stricter standard in Mr. Submarine, where the object or contact of confusion being that of ownership (i.e. source) of the product or business.
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Seems to move close to appropriation/taking.
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Damage question - no actual damages but court said unjust enrichment in finding passing off.
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Also loss of control over the mark/indicia in defendant’s jurisdiction as a head of damage (see Orkin).
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Goodwill - no business activity required, may only be extra-territorial reputation.
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Presume confusion if goodwill (reputation) and misrepresentation are established.
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Very close to misappropriation.
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