Case No. EWHC-3296-(IPEC)

92. Like the parties, I will deal with passing off briefly. 93. It was common ground that, in order to succeed in a passing off claim, Equisafety must establish the elements of goodwill, misrepresentation and damage. On the basis of my findings above, I find that Equisafety had clearly acquired goodwill in the word mercury used in relation to high visibility equine products and that it had done so well before Battle started using the word for its products sold under the HVSMR label. I also find that that use by Battle clearly involved a misrepresentation that those products were derived from or connected in some material way with Equisafety. Finally, I find that such use inevitably resulted in damage to Equisafety. For these reasons, I accept Equisafety’s case that Battle’s activities amounted to passing off. 94. One distinction between the trade mark claim and the passing off claim is as regards the relevant date. As mentioned above, insofar as Battle’s actions took place before 7 June when Equisafety filed its application to register the mark, they cannot constitute infringements of the registered Mercury mark. By contrast, given my findings above, Battle’s uses of the mercury word all took place after Equisafety had acquired goodwill in the word in relation to high visibility equine products and are, therefore, capable of amounting to passing off.