PassingOff and Product Shape
Arecent U.K. decisionprovides a review of the law relating to a claim for passing-off based on the shapeof a product.
The Facts
Theplaintiff is a manufacturer and retailer of furniture. The first defendant was a manufacturer ofsofas. The third defendant operates afurniture retail store immediately adjacent to one of the plaintiff’s stores.
Theplaintiff alleged, among other claims, that the defendants had passed-off theirsofas as the plaintiff’s sofas. Theplaintiff said that passing-off was achieved by a combination of threemeans. First, the defendants sold three stylesof sofas which were identical in shape to the plaintiff’s sofas. Second, the defendants used the same names asthe plaintiff for those three set styles LOFT, MANAHANTAN and LINCOLN. Third, the external appearance of the seconddefendant’s store was repainted in a style that resembled the appearance of theplaintiff’s store next door. By acombination of these three means, or alternatively, two of them, customers wereled to believe that the third defendant’s store was part of the same enterpriseselling the same goods.
Passing-off
Thethree criteria necessary to establish a successful claim for passing-off are:
the plaintiff’s ownership of goodwill inits business, the goodwill being attached to a badge of origin;
a relevant misrepresentation on the partof the defendant by the use of a badge of origin or something similar to it;and
consequent damage to the plaintiff’sgoodwill.
Thebadge of origin relied upon by the plaintiff was a combination of any two ofthe three elements; the shape of the sofas, the style names given to the sofasand the external store get-up. This wasnot the usual passing-off case concerned with a brand name nor was it purely a“get-up” case limited to the shape of the sofa. Nonetheless, the judge thought that the law relating to get-up claimswas relevant.
Thejudge said that it was recognized that it is more difficult to acquire asufficient reputation and goodwill in the shape or get-up of a product. While the principle function of a brand namewas to denote origin, the shape and get-up of a product are not normally chosenfor such a purpose. A member of thepublic seeing a product, for example a red cricket ball, which looks identicalto another does not necessarily or even normally conclude they come from thesame source. The plaintiff must provethat the shape of its goods has come to denote a particular source to therelevant public.
Inshort, a plaintiff must prove that customers rely upon the appearance of theproduct in issue to get the product of the manufacturer they want. This type of reliance is the acid test forthe purposes of acquisition of goodwill in a shape for the purposes of the lawof passing-off.
Inaddition, the judge said that there could be no misrepresentation by reason ofthe use of a get-up if a trade name overrides the get-up as a badge of originin the mind of the relevant section of the public.
Theplaintiff presented evidence but at its best it seemed to only support theposition that the defendant was selling an identical sofa but for considerablyless than the plaintiff but this did not mean that it was a sofa from the samesource. As a result, the judge foundthat there was nothing in the evidence that sufficiently supported the allegedrepresentations and as a result, the plaintiff failed to establish passing-off.
Comment
Thedecision provides a useful summary of the approach to be taken in casesinvolving claims for passing off relating to product get-up. The plaintiff mustprove that the shape of the goods denotes a particular source to the relevantpublic.
John McKeown
Goldman SloanNash & Haber LLP
480University Avenue, Suite 1600
Toronto,Ontario M5G 1V2
Direct Line:(416) 597-3371
Fax: (416)597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.
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