Trademark Infringement and Passing Off

This assignment delves into a case study involving the Davies & Robinson family businesses facing trademark infringement and passing off by another trader. Students are tasked with analyzing the legal arguments surrounding the case, evaluating evidence of damage to goodwill, and determining if the defendant reaped any benefits from the infringement. The analysis should culminate in conclusions about the strength of the passing off claim and recommendations for the Davies & Robinson family.

Intellectual Property Law

Table of Contents
INTRODUCTION...........................................................................................................................1
SECTION A.....................................................................................................................................1
Question 1. Claim against unauthorised use of registered trade mark...................................1
SECTION B.....................................................................................................................................3
Question 4 Common fields of activity for claim of passing off.............................................3
CONCLUSION................................................................................................................................6

INTRODUCTION
The properties included in intellectual property are tangible and intangible properties.
Tangible properties includes work liable for copyright, ideas, inventions and discoveries.
Intangible property includes, trade secrets, patents, copyrights and trademarks. Intellectual
property law lays down rules for securing and enforcing legal rights to invention, design and
artistic work. This report is about the essential elements and principles related to passing off. All
the activities that shall be carried out for a claim of passing off are written in this report. In this
report cases of Davies family and Robinson family is also discussed. The discussion is about
unauthorised use of their registered trade mark by competitors in the market with identical and
claims made by them.
SECTION A
Question 1. Claim against unauthorised use of registered trade mark
Trademark infringement: It is an unauthorised use of a trademark for competing or related
goods. The unauthorised use is by third parties in respect of good and services. A law has been
stated to prevent intellectual property rights of the owner of trade mark from third parties. The
key element of unauthorised use is to establish weather the owner of trademark has consented to
the use of trademark1. That is has been no consent to third party authorising use of trademark of
owner. A consent can be given by the owner in form of license or even be selling the authorised
use of trademark to third party.
Case of Davies Family:
The Davies family is selling its product 'Fellera Hybrid bike' in retail outlets such as Toy
R Us and supermarkets. The name Fellera was registers from past three years. Now, a competitor
is selling the same product as name Bellera in same markets2. The product is launched 5 months
ago and has not been registered yet.
1 Janis, M. D. And et.al., 2016. IP and antitrust: an analysis of antitrust principles applied
to intellectual property law. Wolters Kluwer Law & Business
2 DAILY, J. E., KIEFF, F. S. and WILMARTH JR, A. E., 2014. Introduction.
In Perspectives on Financing Innovation (pp. 13-16). Routledge.
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Legislation related to case in Intellectual property law:
Trademark infringement mean to use identical or similar trademark for identical or
similar goods/ services which have a registered trademark3. A person or business is likely to
infringe a mark if the use of mark creates a confusion in minds of public and consumers. This
includes the cases where public is led to mistaken belief that trade mark though a different one as
one trademark from the same trader. This is because of use of similar or identical trade marks.
Interpretation:
With the reference above case law and the legislation of intellectual property law, it can
be concluded the letter company Bellera is in infringements of trademark of Davies family. Both
he names Bellera and Fellera are same similar in pronunciation and listing. The product of both
the company is also similar in quality and result4. The trademark of Davies family is registered in
name of 'Fellera'. So the competitor who is selling the identical products with a similar name is
in infringement of trademark of Davies family. They can file a claim of passing off against that
competitor for infringements of their registered trade mark.
The competitor if wants to register his trademark must take a consent from Davies
family. The consent shall be written and is called as 'letter of consent'. The Davies family can
refuse to do so, it is on their discretion and will to give such letter of consent. To infringe a
trademark is a civil wring can is governed by civil law of the nation.
Case of Robinson family:
Robinson family is in the business of selling of children's skateboards in the name of
'Razor Sole' a registered trademark since 1980. Another firm is selling the product men's shaver
in the same name 'Razor Sole'.
Legislation related to case in Intellectual property law:
3 Bradner, S. and Contreras, J., 2017. Intellectual Property Rights in IETF
Technology (No. RFC 8179).
4 Lee, E. M. and May, D. C., Knowledge Management Objects LLC, 2016. Computer
assisted and/or implemented process and system for annotating and/or linking documents and
data, optionally in an intellectual property management system. U.S. Patent 9,460,414.
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Where the registered trademark has a significant reputation, infringement may also arise
for the owner of the trademark5. An infringement also arises from use of identical trade mark
although not causing confusion, damage or taking an unfair advantage of reputation from the use
of registered trademark. This can arise from the use of similar or same trade mark for goods or
services which are not similar to product or services registered under registered trademark.
Interpretation:
In consideration with the above case law and legislation related to intellectual
property rights it can be interpreted that the company selling men's shaver is infringing the
registered trademark of Robinson family. This interpretation is based on the fact that the other
company is selling its product men;s shaver in the name of 'Razor sole', which is a registered
trade mark of Robinson family, since 1980. Although there is no similarity between the two
product and will not create confusion among consumer in relation to products. But, it can lead to
damage in the reputation of Robinson family. The men's shavers care sold in name of razor sole
which is the same for skateboards for children sold by Robinson family, this can give impression
in mined of people and consumer that it is a product by same company i.e. Robinson family. The
family can take action against that company as a claim for passing off.
SECTION B
Question 4 Common fields of activity for claim of passing off
Passing off is an activity undertaken by a person or business passes goods and services of
another person in their own name by misrepresentation. The law of passing of protects the
goodwill of a business from other businesses and traders. Passing off causes financial and
representational damages to a business6. This is governed by civil law.
Elements of passing off:
5 Dratler Jr, J. and McJohn, S. M., 2017. Cyberlaw: Intellectual property in the digital
millennium. Law Journal Press.
6 Braga, C. A. P., 2018. Innovation, Trade, and Intellectual Property Rights: Implications
for Trade Negotiations. Megaregionalism 2.0: Trade And Innovation Within Global
Networks. 67. p.343.
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Passing off is generally done for products which are unregistered as a trademark. The
general elements to prove passing off which must be shown by the claimant i.e. a person or
business.
 Trading reputation: the business or person possess a reputation or goodwill in their
name, mark or other identified feature which associate them with public and
prospective consumers.
 Misrepresentation: A misrepresentation by another party must be done which led
public and other to believe that goods actually belongs to claimant.
 Injury to goodwill: The said misrepresentation have caused damage to the goodwill
of the business of claimant.
Principles related with passing off: A person when tries to sell his goods in the name and
under the registered trademark of another it is called as an action of passing off.7. This is a
responsibility of the plaintiff whose registered trademark is being wrongfully used to prove that
the trademark belongs to his business. For an act of passing off it is not essential that both the
defendant and plaintiff belong to similar trade or business. The following are common field of
activities for passing off:
1. Foundation of passing off: the first step in establishment of an action of passing off is
that the party accusing it should prove that his trade name has been extensively used for
the sale of others product.
2. Actions done to constitute passing off: for representing goods of another business the
methods adopted, includes- false representation in direct manner, adopting a trademark
which resembles same as of a rival's trademark, adopting a part of name or a rival's
business, imitation of the colour scheme or getting of rivals product, imitation of design
or shape of product of rival, adoption of word or name of product of rival.
3. Width of passing off: the passing off has got a wider range. It dose not constrain to a
limited area. The passing off can be related to visual images, posters, television
7 Fang, L. H., Lerner, J. and Wu, C., 2017. Intellectual property rights protection,
ownership, and innovation: Evidence from China. The Review of Financial Studies. 30(7).
pp.2446-2477.
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newspaper advertisement associated with plaintiffs product. Australian case of Cadbury-
Schweppes v/s Pubsquash.
4. Action of passing off: to establish an act of passing off there is a sequence of question of
facts, which is related to the implementation and establishment of law to facts8.
Following are the drawbacks related to it:
 For every case it is very difficult to develop evidences of passing off. To prove the
correctness and validity of such evidences is quite difficult in actual world. Taking reference from a previous case to solve a present case can not be held invalid.
In citing an old decision on passing off and to use that as the main fact and rely solely on
that to establish passing off are both different things.
5. Non registration do not restrict passing off: for constitution of passing off all the
elements to prove it shall be established. Mere the fact that the trademark was no
registered can not restrict an action of passing off. when a trademark of plaintiff is
registered but fact doesn't prove use of mark it can not be held as an action of passing off.
With the use of the given fact of Taw case it can be said that just to use a device or a part
of it which define the main character of the device can not be held as a sufficient claim
for passing off.
6. Distinctiveness: there is a necessary for the plaintiff to show that his goods are distinctive
in nature from the trademark. It can be stated the trademark is exclusively associated with
plaintiff goods. It is not material that that plaintiff and defendant trade in same fields.
7. Invasion in plaintiff's goodwill and right of property by defendant: this is an essence of
action of passing off that it shall be proved that an infringement with the goodwill of
plaintiff has occurred9. It is stated that merely use of trade name without registration,
generally suffice the right of user against infringement.
8 Branstetter, L., 2017. Intellectual Property Rights, Innovation and Development: Is Asia
Different?. Millennial Asia. 8(1). pp.5-25.
9 Intellctual property crime and infringment. 2018. [Online]. Available through:
<ttps://www.gov.uk/guidance/intellectual-property-crime-and-infringement#what-is-a-
coexistence-agreement>
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8. Deception: passing off is an action by way of misrepresentation by defendant in course of
business and trade which created a state of confusion and deception in minds of
consumers and public. The burden of proof of the tendency and intention to deceive or
mislead is on plaintiff.
9. False representation: an act by a business person wrongfully using trademark of another
(plaintiff) by representing his goods under trademark of plaintiff to traders and
consumers. The goods are sold under the trade name or trademark of plaintiff.
Misrepresentation can be done in from of connection with product of plaintiff or by
presenting true description that may mislead. False representation is main activity for an
action off passing off. For proving an action of passing of it must be proved that a
misrepresentation of plaintiff's trademark was done by the defendant. An act of
misrepresentation which is done not to harm the one whose trademark is misrepresented,
can not be held as just an act of composition.
10. For passing off fraud is not a necessary element: to commit fraud in not an essential
element for a claim of passing off. In the case of fraud, aspects related to false
representation or carelessness about the truth need to be proved. Passing off is action of
deliberate and intentional misrepresentation but is can never be stated that fraud is
necessary for establishing passing off.
11. Damage: Damage is done to the goodwill and reputation of plaintiff. This damage is only
consequence of passing off action. But, to maintain an action of claim passing off proof
of damage is nor necessary. The fact that a damage and misappropriation of goodwill of
plaintiff is done or not shall be proved. goodwill of plaintiff has suffered or not. Weather
Defendant has reaped any positive
CONCLUSION
From the above report it can be concluded that for a business it is necessary to register its
trademark. It is essential to avoid the damage to its goodwill by action of passing off by other
trades. A passing off claim shall be made by the Davies and Robinson family against the trader
for using their trademarks. There is an infringement in the rights of both the families. This is also
concluded that for a business it is important to renew its trade mark after a period of its
expiration that is ten years from its registration. Renewal is necessary to make a claim for action
of passing off.
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