• Join over 1.2 million students every month
  • Accelerate your learning by 29%
  • Unlimited access from just £6.99 per month

Trademarks and Passing Off

Extracts from this document...


In order to advise Glamix Limited on the issues raised it is necessary to discuss the following areas of law: (a) passing off, and (b) trademarks. (a) The common law tort of passing off enables enterprises to protect their trade symbols. The passing off action may apply in situations where trademark protection does not apply. This is a significant point as Glamix does not have any registered trademarks. The concept of passing off was established in the case Perry v Truefitt,1 in which Lord Langdale MR ruled that a trader 'is not to sell his own goods under the pretence that they are the goods of another man.'2 The action enables 'trader A to prevent a competitor B from passing their goods off as if they were A's.'3 The key component of this wrong is telling lies to the public. It has been identified that the law 'contains sufficient hooks and crannies that make it difficult to formulate any satisfactory definition [of passing off] in short form.'4 However recent authoritative statements of the law on passing off can be found in two House of Lords decisions: Warnink v Townend5 ('Advocaat'), and Reckitt & Colman v Bordern6 ('Jif Lemon'). Although the two cases offer different terms7 of passing off, a general statement can be formulated consisting of the elements of the action. ...read more.


used on Glamix's shampoo. In Taittinger v All Bev30 the Court of Appeal held that by labelling their drink 'Elderflower Champagne', the defendant's had made a misrepresentation that they were part of the group of champagne producers. In relation to action, Supergiant has manufactured their shampoo to look like Glamix's shampoo in the mermaid shaped bottle. This conduct could lead to consequences such as misrepresentation as to the source, quality and as to control or responsibility over the claimant's goods. Glamix needs to demonstrate that Supergiant's31 misrepresentation is deceptive and has confused a substantial32 number of persons among the public33or is likely to do so. The third element of an action for passing off is proof that the misrepresentation damages the goodwill of the claimant. In this situation damage may occur in several forms: loss of existing trade and profit, loss of potential trade and profit34, and damage to reputation.35 If Glamix can fulfil the necessary requirements for the three elements for passing off they will be able to prevent Supergiant from selling Reflex Shampoo. According to relevant case law it is likely that Glamix will succeed in such a claim. (b) The legal regime for the registration of trademarks is enshrined in the Trade Marks Act 1994. ...read more.


733. 17 [1995] FSR 169. 18Ibid., 177. 19 Bently, L. and Sherman, B (2008) Intellectual Property Law, Oxford: Oxford University Press, pg. 730. 20 Ibid. 21 [1846] AC 199. 22 Ibid. 23 Mothercare v Penguin Books [1988] RPC 113. 24 MaCain International v County Fair Foods [1981] RPC 69. 25 Bainbridge, D I. (2007) Intellectual Property, London: Pearson Longman, pg. 744. 26 Bently, L. and Sherman, B (2008) Intellectual Property Law, Oxford: Oxford University Press, pg. 745. 27 My Kinda Town v Soll [1962] RPC 265. 28 Bently, L. and Sherman, B (2008) Intellectual Property Law, Oxford: Oxford University Press, pg. 746. 29 Parker Knoll v Knoll International [1962] RPC 265. 30 [1993] FSR 641. 31 British Telecommunications v One In A Million [1998] 4 All ER 476. 32 Clark v Associated Newspapers [1998] 1 All ER 959. 33 Harrods v Harrodian School [1996] RPC 697. 34 Maxim's v Dye [1978] 2 All ER 55; Lego v Lemelstrich [1983] FSR 155. 35 Annabels's Berkeley Square v Schock [1972] RPC 838. 36 S1(1) Trade Marks Act 1994. 37 S 3 & S4 Trade Marks Act 1994. 38 S5 Trade Marks Act 1994. 39 Swizzels Matlow's Trade Mark Application [1999] RPC 879. 40 Ibid. 41 Bently, L. and Sherman, B (2008) Intellectual Property Law, Oxford: Oxford University Press, pg. 807. 42 S1(1) Trade Marks Act 1994. 43 Case C-273/00 [2002] ECR I-11737. 44 Ibid. ?? ?? ?? ?? 1 of 5 ...read more.

The above preview is unformatted text

This student written piece of work is one of many that can be found in our University Degree Intellectual Property Law section.

Found what you're looking for?

  • Start learning 29% faster today
  • 150,000+ documents available
  • Just £6.99 a month

Not the one? Search for your essay title...
  • Join over 1.2 million students every month
  • Accelerate your learning by 29%
  • Unlimited access from just £6.99 per month

See related essaysSee related essays

Related University Degree Intellectual Property Law essays

  1. Discuss using case law what changes the Land Registration Act 2002 has made to ...

    such as grant of a lease for more than seven years, transfer of an existing lease with more than seven years to run, and of course sale of a fee simple. Duty to register under 2002 Act: When unregistered land is dealt with in such a way as to give

  2. Should Internet Service Providers be liable for the copyright infringements of their account holders ...

    This makes the application of copyright laws to these providers exceptionally difficult.33 Despite the tremendously disruptive nature of the third generation file sharing technology, the very architecture of these P2P networks makes it extremely hard for software suppliers, copyright owners or government officials to track the movement of digital copyright

  1. property law

    therefore petitioned the King directly, on the basis that if the judges did not have the discretion to apply abstract equity, then the King must still retain it. Consideration of these petitions was also delegated by the King, to the Chancellor2.

  2. Intellectual Property Right

    These are some examples: for most of the 19th century, America provided no copyright protection for foreign authors. The Americans argued that they needed the freedom to copy for educational purposes in order to develop the knowledge nationally. On the other side of the world, some parts of Europe built their industrial bases by copying the inventions of others.

  1. Essay question on the extent to which the Trade Marks Act 1994 has expanded ...

    From this one can identify three necessary criteria for a trade mark to be registered: the mark must be a sign, it must be capable of being represented graphically, and it must be capable of being distinguished. The first criteria has not proven too problematic with many different product attributes

  2. Critically analyse what makes for sufficient disclosure in the description of a patentable invention, ...

    53 R.P.C. 323 per Lord Alness at 349 [8] Biogen v. Medeva [1997] RPC1 [9] As a result of recommendation of the Parker Committee which convened in 1916, the prevention of exploitation of the patent laws by foreigners was repeatedly emphasized, and therefore it was concluded that the object of

  1. What might be the greatest strengths of the patent system in its modern form, ...

    Res 236, Washington D.C., U.S. Government Printing Office 1958) p 21 [4] ibid supra note 1 p 10 -12 [5] Those invectives are granted to investments that were made either to gain advantages over competitors in a market, but also granted to achievements of research in academia and of private inventors vested with a creative genius.

  2. Trademarks & Intellectual Property Case. when PRU go to register the name Lancashire ...

    Based on this, it will be necessary for the Canadian All Reds to argue that allowing the name âLancashire All Redsâ (particularly given their nickname âAll Redsâ) would confuse consumers. As the Canadian All Redsâ trademark is registered in the UK and the Lancashire All Reds are also attempting to

  • Over 160,000 pieces
    of student written work
  • Annotated by
    experienced teachers
  • Ideas and feedback to
    improve your own work