Geography Reference
In-Depth Information
temporal scope of that Agreement which arose prior to the trade mark with
which it is alleged to conflict and which entitles him to use a sign identical or
similar to that trade mark. 171
D. UNREGISTERED TRADE MARKS - PASSING OFF
In situations where a trade mark is absolutely barred from registrability because
of a reference to a geographical place or region, an alternative mode of
protection is reliance upon the tort of passing off. This has long been used to
protect geographical designations in common law jurisdictions. In civil law
jurisdictions, unfair competition law performs an equivalent role.
6.166
1. Elements of the action in passing off
The law of passing off is concerned with the protection of reputation and
goodwill from misrepresentations made in the course of trade which cause
damage. In the UK the elements of the action were set out by Lord Diplock in
Erven Warnink bv v J Townend & Sons Ltd 172 (the Advocaat case) and abbrevi-
ated to three requirements by Lord Oliver in Reckitt & Colman Products Ltd v
Borden Inc 173 (the Jif lemon case):
6.167
First, he must establish a goodwill or reputation attached to the goods or services which
he supplies in the mind of the purchasing public by association with the identifying
'get-up' (whether it consists simply of a brand name or a trade description, or the
individual features of labelling or packaging) under which his particular goods or
services are offered to the public, such that the get-up is recognised by the public as
distinctive specifically of the plaintiff 's goods or services. Secondly, he must demon-
strate a misrepresentation by the defendant to the public (whether or not intentional)
leading or likely to lead the public to believe that goods or services offered by him are
the goods or services of the plaintiff. Whether the public is aware of the plaintiff 's
identity as the manufacturer or supplier of the goods or services is immaterial, as long as
they are identified with a particular source which is in fact the plaintiff. For example, if
the public is accustomed to rely upon a particular brand name in purchasing goods of a
particular description, it matters not at all that there is little or no public awareness of
the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he
suffers or, in a quia timet action that he is likely to suffer, damage by reason of the
erroneous belief engendered by the defendant's misrepresentation that the source of the
defendant's goods or services is the same as the source of those offered by the plaintiff.
171
Ibid, at para 100.
172
[1979] AC 731, at 742 D-E.
173
[1990] RPC 341 at 406.
 
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