C’right: overview, 2

#2: Misrepresentation

1. Misrepresentation

   1. 
      Definition
      
      1. 
         Once goodwill has been established, need to show misrepresentation in order for there to be passing off
         
      2. 
         In order for there to be misrepresentation there needs to be actual or potential confusion
         
         1. 
            Misrepresentation can be negligent, willful, careless, but has to be there.
            
   2. 
      TEST:
      
      1. 
         The P must be able to establish that the D misrepresented his or her wares or services as those of the P in a manner that was likely to cause consumer confusion
         
         1. 
            Actual confusion does not need to be established.
            
         2. 
            Can get injunction to prevent anticipated confusion if a product was allowed to enter the market.
            
         3. 
            Misrepresentation may be willful, negligent, or careless
            
      2. 
         How to show confusion
         
         1. 
            If product is inexpensive and likely to take quickly from shelf= than similarities in product appearance are more likely to lead to confusion
            
         2. 
            Luxury product = consumer might take a great deal or more care in inspection the item, product, literature, the label and brand.
            
         3. 
            TEST PERSON for confusion
            
            1. 
               Average or ordinary consumer for the wares or services at issue, who may be found at any point in the chain of consumption
               
               1. 
                  If inexpensive = take quickly from shelf
                  
               2. 
                  Luxury = consumer take a great deal in inspecting item
                  
            2. 
               Can vary depending on the nature of goods or services at issue. It is important because it fyou attribute knowledge then they are less likely to be confused if they are in a hurry and not a lot of knowledge than more likely to be confused.
               

      3. Case Example: Institute National:

         1. 
            FACTS:
            
            1. 
               Champagne and generic term for excellence. Using word is passing off.
               
         2. 
            ANALYSIS
            
            1. 
               Court stated that there needs to be misrepresentation leading to actual or potential [anticipated] confusion and cannot be enough for the P to establish that the D were benefiting from using the term Champagne.
               
            2. 
               Court stated that there was no confusion due to the knowledgeable consumer and the increase in public exposure.
               
               1. 
                  Bright consumer= less confusion
                  
               2. 
                  Naïve consumer/consumer in a hurry = more likely to be confused.
                  

2. Reverse Passing OFF

   1. 
      Reverse passing off = the D represents P’s wares or services as his or her own
      
      1. 
         Regular passing off= D misrepresents his or her wares as those of P
         

   2. Case Example: Bristol Conservatories

      1. 
         FACTS:
         
         1. 
            Salesmen for the D’s company allegedly showed prospective customers pictures of the P’s conservatories as if they were samples of the D’s product and workmanship.
            
      2. 
         ISSUE?
         
         1. 
            Was there reverse passing off?
            
      3. 
         RATIO:
         
         1. 
            Court stated that there was no confusion because the customer’s had no idea that the product existed as P’s [Bristols] product.
            
         2. 
            There is misrepresentation but there is no confusion
            

   3. Case example: BCAA v Union Local 378

      1. 
         FACTS:
         
         1. 
            During a labour dispute the union created various versions of the website similar to BCAA’s website in appearance and used the BCAA’s trademarking in its domain name and meta tag. BCAA argued that there was misrepresentation leading to confusion.
            
      2. 
         ISSUE?
         
         1. 
            Was there misrepresentation leading to confusion?
            
      3. 
         RATIO:
         
         1. 
            Court stated that the test person was a reasonably prudent web user. There was passing off in the 1^st site, but that there was no misrepresentation in the labour context.
            
         2. 
            Important principles
            
            1. 
               Reasonable balance between legitimate protection of IP right and citizen or union freedom of expression- don’t see it discussed in IP Law, except this case, and this is in part because of the way it is easier to use charter when dealing with common law compared to statutory frame work
               
            2. 
               Disclaim: see that the prominence given to the disclaimer must be dependent on a false expression, if there is high potential for confusion than disclaimer must be prominent if it is low than it can be fairly small.
               
         3. 
            Court said there might be situations where no disclaimer is adequate and there is likelihood of confusion.