Passing Off
89.The claimants’ case for passing off was based on the usual three elements: (i) goodwill in their business associated with its trading name, (ii) a misrepresentation by WLE consequent upon its use of the same trading name and (iii) damage, see Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341, at 406.
Goodwill
90.The law of passing off is more closely tied to the real world and in particular to the manner and place of trading by the claimant than is the law of trade mark infringement. For example, the goodwill of restaurants may be geographically limited, see Caspian Pizza Ltd v Shah [2017] EWCA Civ 1874.91.The defendants accepted that the claimants’ restaurant business had goodwill but argued that it was confined to London. The relevant date for the assessment is the same as in relation to the reputation of the Trade Mark, see Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2015] UKSC 31 at [16], i.e. the end of 2009. The evidence under s.10(3) of the 1994 Act also applies here and indicates that the claimants’ business enjoyed goodwill stretching beyond London courtesy of the press coverage, but it was patchy goodwill which probably did not stretch into the 3 mile radius around WLE’s takeaway business in Barrow.
Misrepresentation
92.The issue on misrepresentation is whether a significant proportion of the relevant public, those who knew of the claimant’s business, have also become aware of WLE’s business and because of its trading name have been deceived into thinking that there is a connection in the course of trade between the two businesses. The most likely way that this could have happened is through seeing WLE’s website or through social media. However, I have found that those becoming aware of WLE’s name and business by such a means were within the 3 mile radius, as Mr Gu said. Moreover, there is no evidence of any deception or even evidence of any doubt about a connection between the two businesses in the minds of the relevant public, notwithstanding that the businesses have traded simultaneously for 12 years. If any members of the public have become aware of the two businesses, there is no reason to suppose that this has led to a belief that there is a connection in the course of trade between them. In my view it is likely that there has been no misrepresentation.
Damage
93.In the absence of any misrepresentation there cannot have been any relevant damage to the claimants.94.The claim for passing off does not succeed.