HP-2020-000016 - [2025] EWHC 1451 (Ch)

MGA has not ever brought passing off proceedings against Cabo. Nevertheless, MGA’s pleaded defence relied heavily on claims that its conduct was justified on the basis that Worldeez was passing off LOL Surprise, or at least that it had reasonable grounds to believe that this was the case. By the time of closing submissions, however, MGA’s case on passing off was advanced with considerable diffidence, limited to the point that MGA’s complaints of passing off were a genuine attempt to establish its rights and were not “manifestly unfounded”. On that basis MGA contended that the test for abusive litigation set out in ITT Promedia was not met.

Given my conclusion above that MGA’s threats of litigation should not be regarded as freestanding abusive conduct, but as part of MGA’s threats to withdraw supply, it is not necessary to consider the application of the ITT Promedia test. MGA’s passing off defence, pursued only in that context, therefore does not fall to be determined. Since, however, both parties commented extensively on the passing off issue in their written closing submissions, I will address it for completeness.

The fundamental principle underlying the law of passing off (as summarised by Arnold LJ in Lidl v Tesco [2024] EWCA Civ 262, §28, is that “no person may misrepresent their goods or services to be those of another person”. Both parties relied on the formulation of the test set out by Lord Oliver in Reckitt & Colman v Borden (the “Jif Lemon” case) [1990] 1 WLR 491, at 499. That requires the claimant to establish (i) goodwill or reputation attached to the goods or services which they supply in the mind of the purchasing public, by association with the identifying “get-up”; (ii) 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 them are the goods or services of the claimant; and (iii) damage or the likelihood thereof.

As to the misrepresentation required, the most common form of passing off involves a misrepresentation as to trade origin. That is the misrepresentation alleged by MGA in the present case. That form of misrepresentation does not require proof that the defendant’s goods will actually be mistaken for the claimant’s goods; it is sufficient if customers are led to believe that the claimant is in some way responsible for the defendant’s goods, or that they share a common manufacturer: Glaxo Wellcome v Sandoz [2019] EWHC 2545 (Ch), §163.

Mere confusion or a likelihood of confusion is not the test, and it is not enough if members of the public are “merely caused to wonder” if there is a connection. Rather, passing off requires deception, or a likelihood of deception: Glaxo Wellcome v Sandoz, §159. Furthermore, it is not sufficient that careless consumers may be misled. The deception must be such that ordinary consumers who purchase with ordinary caution and who know what is fairly common to the trade are likely to be misled: Lidl v Tesco, §35.

MGA asserted that there was a misrepresentation leading to, or likely to lead to, the public believing that Worldeez was either LOL Surprise or part of the same range as LOL Surprise. I do not accept that submission. Images of LOL Surprise next to the original design of the Worldeez globe are shown below. While they are both in spherical packaging with a blue background and an image of a doll/figurine, those are the extent of the similarities. The sizes of the products are, as shown below, markedly different (LOL Surprise being 10cm in diameter, compared with 6.5cm for Worldeez). The brand names are prominent and are completely different. The logos of the brands are also entirely dissimilar, as are the colours of the design other than the background colour.