Proving Goodwill of Get-up
Without Brand Name – Not
Impossible But Very Difficult
Introduction
Passing off is a cause of action to claim against a trader who
take advantage of the existing reputation of another’s
business (the claimant) by misrepresenting his goods and
services as related to that of the claimant’s business. Such
misrepresentation made by a trader is typically by way of
imitating, inter alia, the trade mark, trade name of another
trader and/or the packaging, label or get-up of goods of the
claimant. To establish a case of passing off, the claimant
needs to prove the following elements:
1. goodwill or reputation attached to the claimant’s goods
or services;
2. misrepresentation by the defendant leading or likely to
lead the public to believe that goods or services
offered by the defendant are those of the claimant; and
3. damage suffered by the claimant.
Whilst the law of passing off is constantly evolving to combat
new forms of misrepresentation, a recent judgment handed down
by the Intellectual Property Enterprise Court (“IPEC”) in the
United Kingdom shows the limited protection to the “get-up” of
products under the law of passing off. Get-up of a product
generally refers to the configuration of individual elements
in which products are show. These elements typically include
the shape, graphics, colour combination, overall packaging or
display of the same.
Brief facts
In George East Housewares Limited v Fackelmann GMBH & Co KG
[2016] EWHC 2476 (IPEC), the goods concerned were kitchen
measuring cups. The claimant is the successor in business to a
long-established kitchenware manufacturer which sold conical
measuring cups under the brand name “Tala” since 1934. The
shape of their measuring cups sold has been broadly consistent
throughout. The defendants are two connected companies which,
respectively, manufacture and distribute measuring cups under
and by reference to the names of Fackelmann and Dr Oetker. The
claimant complained that the defendants, by selling in the
United Kingdom measuring cups with similar get-up to those of
the claimant’s, had committed passing off
The claimant claimed that the get-up of its measuring cups has
the following distinctive elements: (1) shape of the cup, (2)
the “Tala” name, the design of and the wording used on each of
the exterior and interior of the cups, and (3) the brand name
“Tala” (collectively refers to the “Get-Up”). It gave in its
pleading a detailed written description of the features of the
cups to show the existence of these distinctive elements.
Photos of the claimant’s and the defendants’ respective
measuring cups were annexed to the judgment and reproduced as
follows for illustration:
One of the measuring cups sold by the claimant (extracted from
page 22 of the judgment)
Measuring cups sold by the defendants (extracted from page 24
of the judgment)
The claimant also put forward to the court as evidence a
number of measuring cups it was selling or had sold in the
market. Though all with a conical shape, the appearances of
the exterior and interior of those cups, including their
colour, have certain variations.
As the defendants’ measuring cups were sold under brand names
different and distinguishable from those of the claimant’s,
the claimant’s case is that there is goodwill in elements (1)
and (2) of the Get-Up as stated above, either individually or
in combination, such that passing off could occur regardless
of the role of brand name. The major issue of the case is
therefore whether the claimant could prove goodwill in the
Get-Up of its measuring cups without relying on their brand
names.
Case law and application by the court
A number of cases, including Reckitt & Colman Products Ltd v
Borden Inc (No.3) [1990] RPC 341 (the Jif Lemon case), the
landmark case for passing off, were cited by the parties and
considered by the court. Case law reveals that it is possible
for a competing product to cause passing off even when no
confusingly similar name is used. However, the judge in the
instant case also opined that “cases in which the origin of a
product is recognised regardless of the name attached to it
are rare” (at paragraph 40). In other words, it is difficult
(though not technically impossible) to prove that goodwill
exists in features of goods such as shape and decoration
without regard to the brand name of the goods.
In the instant case, the judge criticised the claimant’s
written description of the features of the measuring cups as
not fully supported by or consistent with all the cups put
forward by it as evidence. The judge found that the detailed
written description was based upon some but not all of the
cups. Some cups shown to the court lacked certain features
contained in the description. The discrepancies, as the judge
found, are significant in terms of the overall look of the
cups concerned.
In addition, there were other versions of measuring cups sold
by the claimant, not put as evidence in the case, which had
further differences in appearance as compared with the
description. The claimant failed to give evidence to isolate
out the effect of these other cups on the sale and advertising
figures as at the date of the alleged passing off. Those
figures could not thus show the particular goodwill in the
Get-Up which is with the features described, to the exclusion
of the brand name of the claimant’s products and the features
of those other versions of measuring cups. The judge also
found that the claimant had provided no direct evidence to
support the claim that the shape of its measuring cups alone
identifies the trade origin of such cups or establishes
goodwill regardless of the brand name.
It was based upon these findings of facts that the judge ruled
against the claimant on the issue of proving goodwill. The
judge further found that, upon the evidence provided, the
similarity between the claimant’s and the defendants’
measuring cups was not sufficient to cause confusion or
misrepresentation for the purpose of passing off. The case was
therefore ruled in favour of the defendants. No passing off
was found.
Difficulties in proving goodwill as reflected from the ruling
Although the ruling of the case is fact sensitive and based
largely on the evidence before the judge, the judge’s
criticisms of the claimant’s evidence reflect some general
difficulties for proving goodwill in get-up without regard to
brand name. A business seldom sells only single homogeneous
products, while any variations of appearance of the same type
of products sold or modification of such products over time
may damage a case of proving goodwill on get-up of the
products without brand name. In terms of evidence, separate
sale and advertising figures for different variations of the
products, so as to show the particular goodwill of the get-up
of each such variation, may be required in order to succeed in
a passing-off claim based on get-up
Given the fact that most business offers heterogeneous
products in the market, the above practical difficulties of
proving goodwill are significant. Litigation strategy and
gathering of evidence for this kind of claim should be well
planned at its beginning stage. The aforementioned
difficulties should also be a factor to be taken into account
for potential settlement. This case clearly demonstrates the
limitation of the law of passing off and the importance of
securing registered trade mark and design rights.
In view of the above, it is therefore advisable for brand
owners, if and when appropriate to take steps to ensure that
get-up of products is protected through other forms of
intellectual property protection, such as copyright,
registration of shape mark and registered designs.
Registration of get-up of the product as a shape mark and/or
registered designs may help to avoid the difficulties of
proving goodwill of the same in future
proceedings. Once so registered, a claim
enforcement
against any
infringement of the get-up will be governed by the statutory
regimes under Registered Designs Ordinance (Cap.522) and Trade
Marks Ordinance (Cap.559) respectively. Claims of infringement
under these statutory regimes do not require the burdensome
proof of goodwill of the products, and may thus be more
favourable to the claimant. It should however be noted that
whether a get-up is registrable as registered designs and
shape mark depends on whether on such get-up meet the criteria
for registration as provided in the relevant ordinance. After
all, to obtain greater protection of interest, possibility of
registration of various intellectual property rights should be
explored at its earliest, and in case goodwill may become an
issue in future, a business should always have a good record
retention practice and seek legal advice at an early stage of
any potential claim.
For enquiries, please contact our Intellectual Property & Technology Department:
E:
[email protected]
T: (852) 2810 1212
W: www.onc.hk
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Hong Kong
Important: The law and procedure on this subject are very specialised and
complicated. This article is just a very general outline for reference and
cannot be relied upon as legal advice in any individual case. If any advice or
assistance is needed, please contact our solicitors.
Published by ONC Lawyers © 2016