Case No. EWHC-1798-(IPEC)

76.Misrepresentation is a key element of the tort of passing off. Whether a misrepresentation has taken place is a question of fact. The misrepresentation must be likely to damage the claimant’s goodwill. It was not disputed that the classic test for misrepresentation was encapsulated in a passage from Reckitt & Colman v Borden noting that a successful claimant:“… must demonstrate 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 him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name.” [at 499 F-G]77.The following passage from that Judgment noted that a claimant in a passing off action must show that he has suffered damage or is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation [at 499 G-H]. The requirements of misrepresentation and damage are somewhat intertwined as Mr Colbey noted, referring to the comments of Jacob LJ that, rather than focussing on the causative effect “[a] more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant’s goodwill or divert trade from him.”