IP-2023-000120 - [2025] EWHC 1793 (IPEC)

The claim in the tort of passing off is intended to protect a claimant’s goodwill generated by their business as a whole. It is not about the Logo as such. Unlike the trade mark claims, claims in passing off can be brought by anyone who can establish the three ingredients of goodwill, misrepresentation and damage. That is a question of fact. In principle therefore a claim by NHBCL does not suffer from the same issues in relation to proprietorship as the Trade Mark claims.

Arnold LJ summarised the fundamental principle underlying the law of passing off in Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262 (“Lidl”) at [27] as “no person may misrepresent their good or services to be those of another person.”. The most well-known formulation is that set out in Reckitt & Colman Products Ltd v Borden Inc (“Jif Lemon”) [1990] 1 WLR 491 at 499.

NHBCL must establish that it owned any goodwill which had been, or which continued to be generated by the business selling the Claimants’ Bag using the Logo and the Brand Name as at around November 2022 when the Defendants commenced the acts complained of. Mere use of the Logo would not be sufficient to establish goodwill in the business.

For those purposes subsequent evidence of activity by NHBCL after the discovery of the Defendants’ activities in January 2023 and/or after the issue of this claim in November 2023 do not assist in establishing goodwill at the relevant date. That includes the efforts by the Claimants to engage with social media and the press including the MailOnline article in September 2024. They may be relevant to other aspects of the claim.

Goodwill is the gateway requirement. If NHBCL cannot establish goodwill in the business on the facts, then misrepresentation and damage fall away even if there might be facts that would support a finding of misrepresentation subject to the establishment of goodwill.