Chapter 11. Passing Off

• Pages: 325-346

DEFINITION

The essence of passing off is the sell ing of goods or the carrying on of a business in

such a manner as to mislead the public into believing that the defendant’s product

or business is that of the claim ant, and ‘the law on this matter is designed to protect

traders against that form of unfai r competition which consists i n acquiring for one-

self, by means of false or misleading devices, the benet of the reputation already

achieved by rival traders’.1

In Warnink v Townend and Sons Ltd,2 Lord Diplock identied ve essential ing re-

dients of the tort:

(a) a misrepresentation;

(b) made by a trader in the course of trade;

(c) to prospective customers of his or ultimate consumers of goods or ser vices sup-

plied by him;

(d) which is calculated to injure the business or goodwill of another trader (in the

sense that this i s a reasonably foreseeable consequence); and

(e) which causes actual damage to a business or goodwill of the trader by whom

the action is brought, or (in a quia timet action) will probably do so.

More recently, the House of Lords in Reckitt & Colman Products Ltd v Borden Inc3 has

identied three elements which must be proved in order to succeed in a passing off

action:

(a) that the claimant’s goods or services have acquired a goodwill or reputation in

the market and are known by some disti nguishing feature;

(b) that there is a misrepresentation by the defendant (whether or not intentional)

leading or likely to lead the public to believe that goods or services offered by

the defendant are goods and services of the cl aimant;

(c) that the claimant has suffered or is likely to suffer damage as a result of the

erroneous belief engendered by the defendant’s misrepresentation.

Where passing off is proved, the successful claima nt will be entitled to an injunction

restraining the defendant from continuing the wrong, to damages for any loss he

1 Heust on and Buckley, Salmond and Heuston on the Law of Torts, 21st edn, 1996, London: Sweet &

Maxwell, p 382.

2 [1979] AC 731, at 742.

3 [1990] 1 All ER 873; applied in Paymaster (Jamaica) Ltd v Grace Kenn edy Remittance Services Ltd (2010)

Supreme Court, Jamaica, No 2000/CLP-82 (unreported). Similarly, in Ciba-Geigy Can ada Ltd v Apotex

Inc [1992] 3 SCR 120 (SCC), the Supreme Court of Canada conc luded that ‘the three necessary com-

ponents of a passing off act ion are … the ex istence of goodwill, dece ption of the public due to a

misrepresentat ion, and actual or potential dam age to the [claimant]’.

CHAPTER 11

PASSING OFF

DOI: 10.4324/978135106 5108 -11

10.4324/97813 51065108-11

326 Commonwealth Caribbean Tort Law

has incurred thereby and to an account of prots made by the defendant in conse-

quence of the tort.

Passing off takes various forms, the most common of which are the followi ng.

Marketing a product as that of the claimant

It is actionable passing off for the defendant to sell merchandise with a d irect state-

ment that the goods are manufactured by the claimant when, in fact, they are not.

Thus, for example, it would be passing off for D, a manufacturer of tyre s, to advertise

and sell his tyres as ‘Goodyear’ or ‘Michelin’ tyres, since this would be an obvious

attempt to prot from the goodwill and reputation established by rival businesses.

Similarly, it has been held actionable for a book publisher to advertise and sell a

book of poetry with the name of Lord Byron on the title page, when in fact that

famous poet had nothing to do with its authorship.4

Imitating the ‘get-up’ of the claimant’s goods

This is a common species of conduct actionable in passing off. The leading case is

White Hudson & Co Ltd v Asian Organisation Ltd,5 where the claimant company man-

ufactured ‘Hacks’ cough sweets in Singapore, which were sold in red cellophane

wrappers and were known amongst the buying public as ‘red paper cough sweets’.

The defendant began to sell cough sweets in Singapore called ‘Peckos’, which were

also covered in red paper wrappers. The claimant proved that most of the buyers

of its sweets in Singapore could not read English and simply asked for ‘red paper

cough sweets’.

It was held that the court would protect the claimant’s interest in the appearance

of its product and that it would be granted an injunction to restrain the defendant

from passing off its sweets as if they were the clai mant’s.

The much earlier Guyanese case of Mazawattee Tea Co Ltd v Psaila Ltd6 illustrates

the same principle. In this case, the claimants had, for more than 30 years, sold in

British Guiana a brand of tea called ‘Mazawattee’. The tea was sold in wrappers

having a dark blue label with a narrow white and blue border, and on the label were

printed the words ‘Mazawattee Tea for the Millions’. The defendants began market-

ing a tea called ‘Mazarani’, which also had a dark label and a narrow white and

blue border on its wrapper. On the label appeared the words ‘Mazaran i Tea’, with a

diamond shape placed between the two words. Berkeley J held that the get-up of the

defendants’ product was:

so similar to that adopted by the [claimants] that it is calcul ated to deceive illiterate

persons and more espec ially those of the Indian race, who are u nable to read or under-

stand English. They m ight very well take the defendants’ tea in the belief that t hey

were purchasing that of the [claimants]. The defendants thems elves have not given

evidence and no explanation ha s been given why they adopted labels so sim ilar in

appearance to those of the [clai mants].

4 Byron v Johnston (1816) 35 ER 851.

5 [1964] 1 WLR 1466.

6 [1925] LRBG 56.