Claim No: IP-2022-000053 - [2025] EWHC 1827 (IPEC)

The law on passing off is well known. As set out in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 499, a claimant must prove goodwill, misrepresentation and damage. Goodwill must include customers in the United Kingdom: Starbucks (HK) Limited & Anor v British Sky Broadcasting Group Plc & Ors [2015] UKSC 31. In respect of misrepresentation, it is not necessary for a claimant to establish that the defendant consciously intended to deceive the public, provided that is the probable result of the conduct: Harrods Ltd v Harrodian School [1996] RPC 697 at 706. Passing off can be established based on false endorsement, provided all three conditions are met. In Irvine v Talksport Ltd [2002] EWHC 367; [2002] WLR 2355, Laddie J held (at §38) that there is no need for the parties to share a common field of activity. At §48 the Judge said:

“[T]here is nothing which prevents an action for passing off succeeding in a false endorsement case. However to succeed, the burden on the claimant includes a need to prove at least two, interrelated, facts. First that at the time of the acts complained of he had a significant reputation or goodwill. Second that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or are approved of by the claimant…”

This approach was endorsed by the Court of Appeal in Fenty v Arcadia Group Brands Limited [2015] EWCA Civ 3; 2015 WLR 3291 (at §40). Kitchin LJ (as he then was) set out the relevant principles as follows:

“34…. [I]t is enough that the goods provided by the defendant are represented as being in some way connected or associated with the claimant, provided that the connection is a material one in the sense that it has caused or is likely to cause the claimant damage in their business…

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43.

So the claimant in a case of this kind must make good his case on the evidence. He must show that he has a relevant goodwill, that the activities of the defendant amount to a misrepresentation that he has endorsed or approved the goods or services of which he complains, and that these activities have caused or are likely to cause him damage to his goodwill and business…”

Counsel for the Claimants also submitted that where goods are inherently deceptive, additional factors apply, and referred me to Wadlow on the Law of Passing Off, 6th Edn (Sweet & Maxwell: 2016):

“5-249. It is passing-off for a trader to put into circulation goods which are inherently likely to deceive ultimate purchasers or consumers, even though the immediate purchasers may be middlemen who are not themselves deceived and even though the middleman may ultimately dispose of the goods in a manner which does not deceive anyone at all. The tort is complete when the defendant parts with possession of the deceptive goods, though actual damage to the claimant may not occur until later, if at all…

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5-255. The law regarding inherently deceptive goods is clear. There is strict liability for putting into circulation goods which bear indicia sufficiently close to those distinctive of the claimant for deception to take place when those goods reach the market. It is no defence that the supplier may act honestly and innocently, nor that his immediate customers may not be deceived…

…

5-257. …Lord Greene confirmed that the tort was complete when the offending goods were sold to the middleman.

“The defendant in a passing-off action has in the normal case, the simple case, sold a quantity of deceptive goods. Those goods he may have sold direct to a member of the public, the ultimate purchaser, or he may have sold them to a middleman who is himself going to sell them to members of the public, or perhaps to some other trader who, in turn, deals directly with the public. The defendant has therefore put upon the market and sent into the market a quantity of goods which on the face of them, and ex hypothesi, are saying something about themselves which is calculated to mislead. That is the very gist of the conception of passing-off.”

5-258. Lord Greene went on to identify three categories of middlemen: those who did not realise confusion was likely and who would therefore take no special precautions to prevent it; those who would foresee confusion and take steps to make sure it did not take place; and those who would fail to do so because they intended to benefit from the possibility of confusion. The defendant’s liability did not, in principle, depend on which category his trade customers fell into. What happened after the goods left his hands was relevant only to the measure of damages, and that would be the same whether a particular dealer fell into the first category or the third.”

I respectfully agree with Professor Wadlow.