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Solicitors at Humphreys & Co. always aim to approach
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competitive rates. Our charging approach is both transparent
and geared to the options open to our clients. Our
solicitors generally charge by reference to time spent but
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employment
Passing off: confusion by name & get-up
Solicitors actively
involved in advising clients on passing
off litigation and other forms of brand
protection
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Intellectual
property: Solicitors here offer comprehensive
support in all areas of intellectual property law
including registered trade marks, passing off,
patents, designs, copyrights and confidential
information.
Trade marks:
Brand
strength can be crucial to success in the
marketplace. Our clients and international
correspondent firms ask our solicitors to handle
on their behalf: registrations, oppositions and
renewals; devising and policing protection
programmes; transfers of title; infringement and
passing off proceedings; revocation actions and
challenges to validity; as well as negotiating and
documenting licence and franchise arrangements.
The
principles of
passing off
"The
principles of
law applicable
to a case of
this sort
[passing off]
are well
known. On the
other hand,
apart from the
law as to
trademark, no
one can claim
monopoly
rights in the
use of a word
or name. On
the other
hand, no one
is entitled to
the use of any
word or name,
or indeed in
any other way
to represent
his goods as
being the
goods of
another to
that other's
injury.
If an
injunction be
granted
restraining
the use of a
word or name,
it is no doubt
granted to
protect
property, but
the property
to protect
which it is
granted is not
property in
the word or
name but
property in
the trade or
goodwill which
will be
injured by its
use."
Burberry's
v Cording
[1900]
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Goodwill
"[Goodwill]
It is a thing
very easy to
describe, very
difficult to
define. It is
the benefit
and advantage
of the good
name,
reputation,
and connection
of a business.
It is the
attractive
force which
brings in
custom. It is
the one thing
which
distinguishes
an old
established
business from
a new business
at its first
start.
The
goodwill of a
business must
emanate from a
particular
centre or
source.
However widely
extended or
diffused its
influence may
be, goodwill
is worth
nothing unless
it has power
of attraction
sufficient to
bring
customers home
to the source
from which it
emanates."
Commissioners of Inland Revenue v Muller
&
Companies
Margarine
Limited [1901]
"It
seems to me
that the
Plaintiff has
proved enough.
He has proved
that the
Defendants
have adopted
such a name as
may lead
people, who
have dealings
with the
Plaintiff, to
believe that
the
Defendant's
business is a
branch of, or
associated
with the
Plaintiff's
business. To
induce the
belief that my
business is a
branch of
another man's
business may
do that other
man damage in
all kinds of
ways. The
quality of the
goods I sell;
the kind of
business I do;
the credit or
otherwise
which I might
enjoy all
those things
may immensely
injure the
other man, who
is assumed
wrongly to be
associated
with me. It is
just that kind
of injury
which what the
defendants
have done here
is likely to
occasion, and
I think the
learned judge
is perfectly
right."
Ewing
v Buttercup
Margarine Co
Ltd [1917]
"Where
a trader
adopts words
in common use
for his trade
name, some
risk of
confusion is
inevitable.
But that risk
must be run
unless the
first user is
allowed
unfairly to
monopolise the
words. The
Court will
accept
comparatively
small
differences as
sufficient to
avert
confusion. A
greater degree
of
discrimination
may fairly be
expected fromt
he public
where a trade
name consists
wholly or in
part of words
descriptive of
the articles
to be sold or
the services
to be
rendered."
Office
Cleaning
Services v
Westminster
Window and
General
Cleaners
[1946]
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“A
passing-off
action is a
remedy for the
invasion of a
right of
property not
in the mark,
name or get-up
improperly
used, but in
the business
or goodwill
likely to be
injured by the
misrepresentation
made by
passing-off
one person's
goods as the
goods of
another.
Goodwill, as
the subject of
proprietary
rights, is
incapable of
subsisting by
itself. It has
no independent
existence
apart from the
business to
which it is
attached.”
Star
Industrial
Company
Limited v Yap
Kwee Kor
[1975]
"First, he must establish a goodwill or
reputation
attached to
the goods or
services which
he supplies in
the mind of
the purchasing
public by
association
with the
identifying
"get-up"
(whether it
consists
simply of a
brand name or
a trade
description,
or the
individual
features of
labelling or
packaging)
under which
his particular
goods or
services are
offered to the
public, such
that the
get-up is
recognised by
the public as
distinctive
specifically
of the
plaintiff's
goods or
services. Second, he
must
demonstrate a
misrepresentation
by the
defendant to
the public
(whether or
not
intentional)
leading or
likely to lead
the public to
believe that
goods or
services
offered by him
are the goods
or services of
the plaintiff.
... Third, he
must
demonstrate
that he
suffers or ...
that he is
likely to
suffer damage
by reason of
the erroneous
belief
engendered by
the
defendant's
misrepresentation
that the
source of the
defendant's
goods or
services is
the same as
the source of
those offered
by the
plaintiff."
Reckitt
& Colman
Products Ltd v
Borden Inc (No
3) [1990]
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Instruments
of fraud
“Whether
any name is an
instrument of
fraud will
depend upon
all the
circumstances.
A name which
will, by
reason of its
similarity to
the name of
another,
inherently
lead to
passing-off is
such an
instrument. If
it would not
inherently
lead to
passing-off,
it does not
follow that it
is not an
instrument of
fraud. The
court should
consider the
similarity of
the names, the
intention of
the defendant,
the type of
trade and all
the
surrounding
circumstances.
If it be the
intention of
the defendant
to appropriate
the goodwill
of another or
enable others
to do so, I
can see no
reason why the
court should
not infer that
it will
happen, even
if there is a
possibility
that such an
appropriation
would not take
place. If,
taking all the
circumstances
into account
the court
should
conclude that
the name was
produced to
enable
passing-off,
is adapted to
be used for
passing-off
and, if used,
is likely to
be
fraudulently
used, an
injunction
will be
appropriate.
It
follows that a
court will
intervene by
way of
injunction in
passing-off
cases in three
types of case.
First, where
there is
passing-off
established or
it is
threatened.
Second, where
the defendant
is a joint
tortfeasor
with another
in passing-off
either actual
or threatened.
Third, where
the defendant
has equipped
himself with
or intends to
equip another
with an
instrument of
fraud. This
third type is
probably mere
quia timet
action.”
British
Telecommunications
plc and Others
–v- One in a
Million Ltd
and
Others[1998]
"There
is one other
general matter
to deal with
before turning
to the facts,
namely the
size of the
claimant's
reputation. At
some point a
reputation may
be respected
by such a
small group of
people that it
will not
support a
passing−off
action.
Neither Mr
Purle nor Mr
Speck were
able to
formulate a
test for this
bottom level.
Mr Purle said
it was a
matter of fact
and degree. I
agree with
that. The law
of passing−off
protects the
goodwill of a
small business
as much as the
large, but it
will not
intervene to
protect the
goodwill which
any reasonable
person would
consider
trivial.”
Sutherland
–v- V2 Music
[2002]
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Intellectual
property at a glance
- Patents, trade marks,
copyright, designs and trade
secrets in their national, EU and
international contexts.
- Trade
marks principally indicate the
origin of goods or services. They
can be protected in the UK through
either passing off or
registration. The
choices for registration are a UK
or a Community trade mark or
international registration.
- A registered trade mark
may afford protection against use
of the same or a similar sign for
the same, similar or dissimilar
goods or services.
- Patents confer monopoly
rights in inventions. The
invention must be new, inventive,
capable of industrial application
and not excluded.
- Patents must be licensed
in accordance with the Block
Exemption on Technology Transfer
Agreements. They
may be subject to compulsory
licences and Crown use.
- Copyright subsists in
works not ideas. Related
rights include moral rights and
rights in performances.
- Copyright is infringed by
taking a substantial part of the
claimant's work. Additional
damages are available for flagrant
infringements.
- Database right subsists
in electronic and paper databases
if a substantial investment is
made in obtaining the contents.
- Designs are protected in
UK law by registered and
unregistered design rights. Community
designs co-exist with UK designs
laws.
- Trade secrets may be
protected by a civil law action
for breach of confidence. The
information must be confidential,
imparted in circumstances
importing a duty of confidence and
the defendant must make
unauthorised use of the
information.
- Intellectual
property rights are generally
litigated in the High Court. A
general pre-action protocol sets
out the steps that parties should
follow when considering
litigation.
- Expert
evidence can be the key to success
in intellectual property cases
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Fixed charge package with
options and recommendations
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Combinations
Solicitors
here can supply the energy and depth in
intellectual property law which companies,
businesspeople and correspondent firms need in
a competitive world marketplace to manage
their intellectual property rights
successfully, including in relation to:
- internet
- joint ventures
- know-how & show-how
- licensing &
franchising
- litigation,
arbitration, mediation
- media & publishing
- patents (licensing,
transfer & litigation)
- passing off
- technology transfer
- trade marks
- unfair competition
- business & company
acquisitions & sales
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- computer software
- confidential
information
- copyrights
- database rights
- defamation &
malicious falsehood
- designs (registered
& unregistered)
- employee obligations
- EU treaty regulations
- free trade
- information technology
- music business
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Accessibility
We take instructions from UK & international clients. Our independent lawyers are available by email, telephone & fax. With central Bristol offices we are just 90 minutes from London by road or rail and 15 minutes from Bristol International Airport. We can travel to meetings if required.
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Independent approach
We are an independent professional law firm here, not a legal factory turning out mass-produced products. In our experience, determined case-handling is more likely to produce effective results.
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Turnaround time
Solicitors at Humphreys & Co. look to input not only
careful legal work and precision but also the determination
to keep matters moving. They aim to work in clients' real
interests with energy and pragmatism.
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Communication skills
Solicitors at Humphreys & Co. always try to open up the
legal process by giving advice and explaining options to
clients in a concise and straightforward way, identifying
clear courses of action whatever the technical or legal
complexities of the subject. |
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