Case No. IP-2021-000046

26.The principles of passing off are well known. The elements necessary to reach a finding of passing off are the ‘classical trinity’ of that tort as described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL, [1990] RPC 341, HL) namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation.27.In the context of a section 5(4)(a) TMA invalidity action, the burden is on the party seeking to invalidate and the court is required to consider a normal and fair use of the mark concerned in respect of the goods or services for which it is registered, and determine whether this would result in passing off given the actual reputation of and goodwill in the opponent’s unregistered mark. 28.When considering goodwill, there must be “at least a prima facie case that the opponent’s reputation extends to the goods comprised in the applicant’s specification of goods.” (per South Cone Inc. v Bessant (REEF) [2002] EWCA Civ 763, [2003] RPC 5 at [27]) as at the relevant date.29.The relevant date is the date of application of the mark concerned, or its earlier priority date if there is one, save that if the mark was already in use prior to that date then the relevant date is the time of the first actual or threatened act of passing off: i.e. the date of commencement of the conduct complained of (which in this case is the date on which the ICE Group began to offer the relevant goods to the public in the United Kingdom) and where the conduct has changed materially between that date and the later date when the application was made, the court must reassess whether the position would have been any different at that later date.