IP 2.13 PASSING OFF
PASSING OFF.
This is like an escape route for unregistered proprietors. A man is precluded from selling his goods on the pretence that they are goods of another (usually more established trader).
Aims to prevent confusion of the public and preclude a man from gaining unauthorised benefiting from a person’s business goodwill-Perry V Truefitt.
Section 3 of the act.
Passing off may be by:
- Imitating the plaintiff’s trade mark.
- Imitating the getup or appearance of the plaintiff’s goods.
In a passing off action, the plaintiff must prove the following:
- That his business name has reputation and goodwill in the particular course of business.
In Niger Chemist V Nigeria Chemist, plaintiff adduced evidence to this effect
- That the goodwill of his business has been damaged.
- That the plaintiff and defendant were involved in the same course of trade.
In Mc Cullock V Lewis A. May, the plaintiff was a broadcaster of BBC while the defendant marketed cereal under the alleged name “uncle Mac”. No infringement since they are not in the same business.
In Parker-knoll V Parker-Knoll International Ltd, both companies were manufacturers of Furniture one based in UK and the other America which just began trading in UK. An injunction was granted to stop further trading as the names were too similar to deceive.
- That the defendant has done an act which is capable of deceiving or confusing the public.
The public being an ordinary and unwary purchaser/consumer.
In Tussaud V Tussaud, the defendant who had left the plaintiff’s employment still retained the plaintiff’s name. An injunction was granted to prevent usage of the plaintiff’s name.
Niger Chemist V Nigerian Chemist; the court held that the defendants would greatly confuse the public if they continue to trade in a name (Nigerian Chemist) so similar to that of the plaintiff (Niger Chemists Ltd).
In Trebor V Associated Diaries, the court held that the defendants used wrapper which mark was similar to that of the plaintiff.
In UK Tobacco V Carreras, the court found that the majority of consumers of the plaintiff’s cigarette were illiterates and they were likely to be deceived. Thus prohibited further infringement.
Descriptive Words cannot be used as trademark except the name is so unique and distinctive such that it is now associated with the product.
In British Vacuum Cleaner V New Vacuum Cleaner, the court held that the word, “vacuum cleaner” cannot be protected because it only described the equipment.
