The Legal Eagle Study Notes
Intellectual Property Law -Passing off is a property right -Erven Warnink v Townend them a monopoly for selling
Passing Off (Part 1 of 2) -protects the underlying (1979)- Advocaat case. lemon juice and plastic lemons
L.O goodwill in the business Warnink was a primary HoL: The plastic lemon was
-Understand the underlying Passing Off or TM? producer of Dutch liquor made not prescriptive because
principles of p/ off -If considering either/or which from blend of hen egg yolks, Reckitt & Colman were not
-Identify the necessary should you choose? aromatic spirits, sugar, brandy selling plastic lemons.
elements for a claim -Disputes over registered TM sold under name Advocaat. -Although true for other
-Recognise elements of are cheaper and quicker. Point Townend produced a similar countries that it is
goodwill misrepresentation to register to establish right
and damage in case law alcoholic drink produced using commonplace to sell lemon
-P.off is harder to
-Understand false egg and wine sold under the juice in plastic containers in
prove/outcome difficult to
endorsement predict – three elements to name Keelings Old English lemon containers. BUT in the
-Identify the remedies for establish Advocaat. In applying the test UK Reckitt & Colman were the
p/off -Registration of TM acts as for passing off, Lord Diplock only company doing so.
-Be familiar with aspects of warning to rivals. 3rd parties established five criteria for a -Court were not easy on the
p/off in the internet can see from register that the claim of extended passing off. point on whether or not it
A common law IP right and right exists There had to be: would give Reckitt & Colman
based on caselaw. (No statute -Not always possible to -Misrepresentation the monopoly. Held the plastic
you need to familiarise yourself register TM e.g. 3D marks are -By a trader in course of trade lemon had come to be
with) often seen as being devoid of -To prospective customers or recognised by consumers as
-Originates from tort of distinctive character. However, ultimate consumers Jif Lemon Juice. Therefore
deception, it is an economic might be protectable under an
tort protects commercial -which is Calculated to injure Reckitt & Colman could
action of passing off
interests. business or goodwill establish that they have
-P/off can give wider protection
-Conceptually passing off is than r.TM protects the get-up -and Causes actual damage goodwill. Anyone could sell a
linked to statutory trademark of a product and not just brand (or will probably do so) product as long as they made
law. Form of protection for name/shape etc. Classic form sufficient effort to differentiate
unregistered TM so if you have -If the mark is reg.TM claim will Reckitt & Colman v Borden – the product from Reckitt &
not got round to registering a be brought under passing off or Jif Lemon Case. Reckitt Colmans Jiff Lemon. Lord
logo or a brandname as a alongside the claim for TM produced Jif Lemon holders in Oliver – outlined three
trademark you might have a infringement. the shape of a lemon with high elements which have got to be
remedy in an action for -Advantage that if the validity quality lemon inside. Selling shown for party to succeed in
passing off if another party is of your TM is challenged have a passing off action. Known as
plastic lemon with a yellow cap
using the mark. got another cause of action to and the word Jif inscribed on it the classic trinity:
-Passing off is an independent rely on. Although totally
since 1955. In 1985, a US 1-He must establish a
cause of action from TM. S2(2) separate areas of law, they
TMA leaves the right company Borden started goodwill or reputation
provide a two pronged
untouched, no proceedings lie selling similar lemons in the attached to the goods or
approach to the protection of a
to prevent or recover damages brand and complement each supermarket but with different services which he supplies in
for the infringement of an other. coloured caps. Reckitt sued for the mind of the purchasing
unregistered trademark as Forms of Passing Off passing off. Borden had three public by association with the
such; but nothing in this Act Two forms of passing off. In main arguments: identifying get-up. Whether
affects the law relating to practice, classic form is often (1) The lemon shape was consists simply of a brand
passing off. descriptive of the product name or a trade description, or
used, reason for that is it is
In some ways the cause of (2) Selling lemon juice in the individual features of
action for passing off is wider simpler.
Extended form plastic containers made to labelling or packaging. Under
than a registered TM action which particular goods or
Extended form of passing off resemble lemons was
because it protects all the
commonplace in the trade services are offered to the
ways a product and business developed in connection with
(3)If Reckitt &Colman were public, such that the get-up is
may be identified as well as actions in passing off brought
the brand name or logo. Can allowed to protect their lemon recognised by the public as
by a class of traders showing
cover the look or feel of a in passing off. It would give distinctive. Specifically of the
the goodwill in the mark.
product. plaintiff’s goods or services.
Explained by Lord Diplock
2021 ©
Intellectual Property Law -Passing off is a property right -Erven Warnink v Townend them a monopoly for selling
Passing Off (Part 1 of 2) -protects the underlying (1979)- Advocaat case. lemon juice and plastic lemons
L.O goodwill in the business Warnink was a primary HoL: The plastic lemon was
-Understand the underlying Passing Off or TM? producer of Dutch liquor made not prescriptive because
principles of p/ off -If considering either/or which from blend of hen egg yolks, Reckitt & Colman were not
-Identify the necessary should you choose? aromatic spirits, sugar, brandy selling plastic lemons.
elements for a claim -Disputes over registered TM sold under name Advocaat. -Although true for other
-Recognise elements of are cheaper and quicker. Point Townend produced a similar countries that it is
goodwill misrepresentation to register to establish right
and damage in case law alcoholic drink produced using commonplace to sell lemon
-P.off is harder to
-Understand false egg and wine sold under the juice in plastic containers in
prove/outcome difficult to
endorsement predict – three elements to name Keelings Old English lemon containers. BUT in the
-Identify the remedies for establish Advocaat. In applying the test UK Reckitt & Colman were the
p/off -Registration of TM acts as for passing off, Lord Diplock only company doing so.
-Be familiar with aspects of warning to rivals. 3rd parties established five criteria for a -Court were not easy on the
p/off in the internet can see from register that the claim of extended passing off. point on whether or not it
A common law IP right and right exists There had to be: would give Reckitt & Colman
based on caselaw. (No statute -Not always possible to -Misrepresentation the monopoly. Held the plastic
you need to familiarise yourself register TM e.g. 3D marks are -By a trader in course of trade lemon had come to be
with) often seen as being devoid of -To prospective customers or recognised by consumers as
-Originates from tort of distinctive character. However, ultimate consumers Jif Lemon Juice. Therefore
deception, it is an economic might be protectable under an
tort protects commercial -which is Calculated to injure Reckitt & Colman could
action of passing off
interests. business or goodwill establish that they have
-P/off can give wider protection
-Conceptually passing off is than r.TM protects the get-up -and Causes actual damage goodwill. Anyone could sell a
linked to statutory trademark of a product and not just brand (or will probably do so) product as long as they made
law. Form of protection for name/shape etc. Classic form sufficient effort to differentiate
unregistered TM so if you have -If the mark is reg.TM claim will Reckitt & Colman v Borden – the product from Reckitt &
not got round to registering a be brought under passing off or Jif Lemon Case. Reckitt Colmans Jiff Lemon. Lord
logo or a brandname as a alongside the claim for TM produced Jif Lemon holders in Oliver – outlined three
trademark you might have a infringement. the shape of a lemon with high elements which have got to be
remedy in an action for -Advantage that if the validity quality lemon inside. Selling shown for party to succeed in
passing off if another party is of your TM is challenged have a passing off action. Known as
plastic lemon with a yellow cap
using the mark. got another cause of action to and the word Jif inscribed on it the classic trinity:
-Passing off is an independent rely on. Although totally
since 1955. In 1985, a US 1-He must establish a
cause of action from TM. S2(2) separate areas of law, they
TMA leaves the right company Borden started goodwill or reputation
provide a two pronged
untouched, no proceedings lie selling similar lemons in the attached to the goods or
approach to the protection of a
to prevent or recover damages brand and complement each supermarket but with different services which he supplies in
for the infringement of an other. coloured caps. Reckitt sued for the mind of the purchasing
unregistered trademark as Forms of Passing Off passing off. Borden had three public by association with the
such; but nothing in this Act Two forms of passing off. In main arguments: identifying get-up. Whether
affects the law relating to practice, classic form is often (1) The lemon shape was consists simply of a brand
passing off. descriptive of the product name or a trade description, or
used, reason for that is it is
In some ways the cause of (2) Selling lemon juice in the individual features of
action for passing off is wider simpler.
Extended form plastic containers made to labelling or packaging. Under
than a registered TM action which particular goods or
Extended form of passing off resemble lemons was
because it protects all the
commonplace in the trade services are offered to the
ways a product and business developed in connection with
(3)If Reckitt &Colman were public, such that the get-up is
may be identified as well as actions in passing off brought
the brand name or logo. Can allowed to protect their lemon recognised by the public as
by a class of traders showing
cover the look or feel of a in passing off. It would give distinctive. Specifically of the
the goodwill in the mark.
product. plaintiff’s goods or services.
Explained by Lord Diplock
2021 ©
