[2023] EWHC 2176 (IPEC)

The requirements of a passing off action are not in dispute. The basic elements of a claim in passing off are (a) goodwill; (b) misrepresentation; and (c) damage. See for example Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491.

It was common ground that goodwill was associated with the name BICC when it was used in connection with BICC Plc’s business, up until that was sold in 1999. The Defendants also admitted that the Claimant had goodwill in the BICON mark. However, as I have explained above, the Defendants denied that the Claimant owns the goodwill associated with the BICC brand, and challenged the chain of title which the Claimant said showed that it was the successor to BICC Plc’s goodwill in the BICC name. They also submitted that if the Claimant had acquired such goodwill, it had either abandoned it, or the goodwill had been extinguished over many years of non-use.