Case No. IP-2014-000051

141.Oran also relies on passing off pursuant to the ‘classical trinity’ of that tort as described in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL), namely goodwill, misrepresentation leading to deception and damage. As previously stated, goodwill is not in issue. 142.Insofar as the passing off claim concerns the use of the ORANMORE Signs with and without the First Defendant’s Device, both parties rely on the same submissions in respect of whether the use of the signs constitutes a misrepresentation likely to lead to deception on the part of the public as they did in relation to confusion. I am satisfied that my findings in respect of confusion for infringement of the Registered Mark are equally as persuasive of deception of the public for the part of passing off, in particular given the support provided by the examples of actual confusion relied on by Oran. Accordingly I am satisfied that use of the ORANMORE Signs is a misrepresentation to the public which leads or is likely to lead the public to believe that the goods or services offered by it are the goods or services of Oran.143.I will deal briefly with the issue of Oran’s own use of its OP Device. I do not find it to be conceptually very similar to the First Defendant’s Device such that the use of the First Defendant’s Device alone is a misrepresentation likely to lead to deception. It is, in my opinion, the ORANMORE Signs that cause the misrepresentation, and that misrepresentation is not negated by the addition of the First Defendant’s Device. 144. Finally, I accept Mr Moody-Stuart’s submission that such misrepresentations are likely to damage Oran’s trade or business, as Oran and Oranmore are direct competitors in the UK market and there is some evidence before me that Oran has already suffered lost sales in the UK by reason of Oranmore’s trade. Accordingly it follows that Oran has made out its case in passing off. Had I not found that Oran was precluded from bringing the passing off claim by operation of the Compromise Agreement, I would have given judgment to Oran on the passing off claim in accordance with the paragraph above. OVERALL CONCLUSION 145.It follows from my findings in respect of the Compromise Agreement in paragraph 98 above, that I dismiss the claim. Annex 1 First Defendant’s Device (and ORANMORE Sign plus First Defendant’s Device): Oran’s OP Device: