Elements of Passing Off: Damage -
Clear that actual damage need not have been suffered before the plaintiff may sue; rather, it is the likelihood of damage resulting from the defendant’s misrepresentation that supports the action.
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Proof of damage is always part of the plaintiff’s legal onus, the evidentiary burden may quickly move tot he defendant.
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From The Noshery: “probability of damage may also be taken as equivalent in these cases to probability of deception.”
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If the public is probably being deceived then there is probably damage, even though no actual damage can be proven.
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In practical terms, proof of likelihood of damage is helped by proof of actual confusion or by proof of the defendant’s intention to pass off, although neither is conclusive.
Heads of Damage -
Most commonly argued sort of damage; because of the defendant’s misrepresentation, consumers do not deal with the plaintiff as they otherwise would.
Damage to Repute -
Likely where the product or service that the defendant provides is inferior to the plaintiff’s product or service.
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Consumers will be unlikely to deal further with the plaintiff or to recommend the plaintiff to others.
Harmful Association -
Plaintiff and defendant not in competition with one another, the misrepresentation may be that there is some commercial association between them.
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If defendant’s business is carried on poorly, or is a type of business disdained by the plaintiff or held in low regard by the public, there may be a loss to the plaintiff’s good name.
Annabel’s (Berkely Square) Ltd. v. Schock -
Defendant ran an escort service under the name Annabel’s, found that the mere association of the two businesses was found to be damaging to the plaintiff.
Loss of Licensing or Franchising Opportunity -
Not harmful because of the defendant’s disreputable conduct or business buy may have a negative impact on the plaintiff’s aspirations.
House of Faces Inc. v. Leblanc -
Court found passing off where the defendant copied almost exactly the plaintiff’s cosmetic products, name, get-up, and method of doing business.
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Defendant’s business would be an impediment for the plaintiff in arranging new shopping mall leases.
Inability to Expand -
While the plaintiff and defendant are not direct competitors, the plaintiff can argue that they may be precluded from entering the marketplace in the area of the defendant’s activity.
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This may be the geographic area, as in Orkin, or the type of business where that is not common to the parties.
Harrods Ltd. v. Harrodian School Ltd. -
Harrods was a famous department store.
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Judge explains that just because an act would be an infringement under the Trademarks Act if the mark were registered, this did not mean that there had been passing off.
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“It is well settled that (unless registered as a trademark) no one has a monopoly in his brand name or get-up, however familiar these may be.”
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It is the goodwill that is important.
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“Harrodian” does not mean Harrod’s, as a Churchillian speech is not one of Churchill’s speeches.
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Couldn’t establish any real likelihood of confusion or damage to their goodwill.
Defences Unclean Hands Brewster Transport Company, Ltd. v. Rocky Mountain Tours and Transport Company, Ltd. -
Both the plaintiff and defendant had headquarters in Banff, AB.
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Plaintiff alleged that it had been carrying on the business of motor passenger transportation under the name of Royal Blue Line in AB.
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Defendant started up business in AB, had been doing business under that same name elsewhere for a number of years.
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SCC refused injunction.
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Plaintiffs did not come to the court with clean hands, and it did not matter that the defendants, as an American company, might not originally have had a cause of action against the plaintiffs' own imitation.
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This case out to be of general application in passing-off cases where a claimant with reputation fails solely on the technical ground that he has no relevant goodwill.
Use of One’s Own Name -
It is a defence to passing off that the defendant is merely using his or her own name.
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The theory is that the law should not interfere with a person’s natural right to own-name trading, even at the cost of inevitable confusion.
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There are, however, many qualifications to this proposition that the defence may be doubted to exist at all - very narrow.
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“The law is quite clear that no man can acquire a monopoly of his own surname in such a way as to prevent another person of the same name honestly using that name in connection with his goods or his business.”
Biba Group Ltd. v. Biba Boutique -
Defendant claimed to have used her nickname for her business.
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Court said whatever the rights may be in respect of the use of a surname, it does not appear that those authorities go to the question of the use of a first name, let alone a nickname.
Mario’s Spaghetti House & Pizzeria Ltd. v. Italian Village Ltd. -
Interlocutory injunction against the defendant’s use of “Mario Place” for a nearby restaurant, even though the proprietor was the Mario of the plaintiff’s Mario’s restaurant, who had sold out three months earlier to set up on his own.
“Honestly Using” Hunt’s Ltd. v. Hunt -
The defendant, a brother of the plaintiff’s founder, was judged to be clearly mala fide in entering the same business using the same name in the same script and advertising as “Hunt’s new store”.
Concurrent or Prior Use J. & A. McMillan Ltd. v. McMillan Press Ltd. -
Plaintiff was incorporated with the same name, business was office supplies and printing services.
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Later, defendant was incorporated, and the printing aspect was sold to it.
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Occupied same building, no separation between them.
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Later, plaintiff moved across street, old sign was still left up, and new sign across the street was put up.
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New printing company leased the spot in original building, then eventually left.
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Defendant then bought it out, changed the sign to say “McMillan” with “McMillan Press Ltd.” in small letters underneath.
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There was substantial, actual, confusion, but passing-off failed.
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“McMillan” was as much a part of the defendant’s goodwill as the plaintiff’s.
Fraser Taxi Ltd. v. Reid -
Plaintiff sought an injunction against the defendant’s use of the name.
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Defendant had used the name, but as a sham, to obtain a second phone line when that was difficult to do.
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Although he may have operated with the name in some regard, it was done illegally.
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Permanent injunction was granted.
Disclaimers -
If a defendant disclaims any tie to the plaintiff’s goods, services, or business, it could be said that this is a factor in assessing likelihood of confusion.
Associated Newspapers Group v. Insert Media Ltd. -
Defendant proposed a scheme whereby it would arrange for news agents to insert advertising material concerning the defendant’s clients into various newspapers without the authority or consent of those newspapers.
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Defendant was prepared to include disclaimer on the inserts.
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The disclaimer was held to be inappropriate because it was unlikely to come to the notice of customers, but likely to add to the confusion if it did.
Home Shoppe Ltd. v. National Development Ltd. -
Held that there was no likelihood of confusion between the plaintiff’s Gut Buster and the defendant’s Gut Trimmer.
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Both were sold through television promotion, but there were obvious differences in the way in which they were demonstrated and a remarkable difference in price.
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Clear indications of source appeared in the commercials of both products.
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Court also found a sufficient notice by the defendant in the TV advertisements disclaiming any identity with the plaintiff or its product.
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