“Possibly say it’s your own label made by an ethical, cruelty free, local company in Liverpool, what do you think? Don’t mention about being exclusive because I am the creator, so copy right stays with me.”
“To get through this I needed to have a focus, something I loved, something I was obsessed with to take my mind from the pain ... Kate McIver skin was born and I literally put my life and soul it too [sic] researching and training, creating bespoke treatment and tailor making the ingredients for each session meaning treatments that I could be remembered for. … The Kate McIver serum was designed to turn my skin around to help my cells recover and rejuvenate, it also healed all my scars. Fast forward 7 months and I’m in remission, my skin and hair is healthy and glowing and it’s safe to say the business is thriving.”
“I made this with my very own hands [to] remove a scar last year & yes it worked!!!! This serum is still hand made but unfortunately the cost of making it has increased so there will be a small increase at the end of the month.”
“My first Guinea Pig for my serum back when it was a case of making up the serum in my back room at home.”
“I am currently feeling very threatened by investors and companies wanting to jump on the back of the product success and use my brand to resell for themselves. Obviously as I currently do not own the copy write or IP of my best selling product I am in a very vulnerable position and my business is massively at risk.”
“The next steps now we need to add in a few ingredients so the serum is not identical to the original product by my current lady. I would also like to use this as a chance to increase the quality and effectiveness of the serum. Would it be possible to connect with a lab tech who may able to advise what ingredients would really enhance the serum?”
“I was in my twenties, and it was just heartbreaking to see my body deteriorating so rapidly from the pharmaceuticals … I threw myself into researching and creating bespoke treatments that could be used on all skin types, and this was where the ‘magic’ serum was born.”
“Following months of intensive research and experimentation, Kate’s new wonder serum began to take shape, offering to rejuvenate skin cells, heal scars and remove the harsh dark circles she struggled with.”
“Created by stage 4 cancer thriver Kate McIver.”
“Mum creates ‘secret weapon’ serum that’s transforming the lives of cancer patients”
“A mum battling stage four cancer has created a ‘secret weapon’ serum that’s helping other people suffering with cancer feel good about themselves.”
“But Kate decided to fight back and using her skincare knowledge from her job in skin aesthetics, created a serum using ingredients that specifically target the problem and promotes the rejuvenation of skin cells. Within weeks Kate’s skin was transformed and she started to share it with other cancer patients – who she knew from giving facials too [sic].”
“I gave it to my friends and family and they also started to notice a huge difference in their skin – so I knew I was on to something.”
“… I think I had a lot of time on my hands, so I threw myself into my passion for skin, um and I did a lot of training and skin science courses and I started to sort of delve quite deep into the ingredients side of things, um, and product development because I knew one day that was my sort of end goal, you know, to produce a skincare range.”
“My Lords, A. G. Spalding & Bros. v. A. W. Gamage Ltd., 84 L.J.Ch. 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) 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.”
“In seeking to formulate general propositions of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because all passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off.”
“Although your Lordships were referred in the course of the argument to a large number of reported cases, this is not a branch of the law in which reference to other cases is of any real assistance except analogically. It has been observed more than once that the questions which arise are, in general, questions of fact. Neither the appellants nor the respondents contend that the principles of law are in any doubt. The law of passing off can be summarised in one short general proposition — no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. 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 demonstrate 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.”
“It appears to me idle to say that this is not a passing-off. What was the purpose of what I have described as a moulding of the observations contained in The Daily Telegraph? To leave out Lawrie Wylie and refer to ‘His First Car’ and not ‘The New Car’. ‘His First Car’ was the title of the film of the defendants and they were adducing its success as appropriate to and belonging to their film ‘His First Car’ when in truth and in fact it belonged to the plaintiff and his sketch ‘The New Car’. That seems to me to amount to a notice or invitation: ‘Come and see our film and when you have seen our film you will have seen the sketch which has been spoken of in the manner which is stated in the passages which appear in the advertisement.’ It appears to me quite clear that this was an attempt to pretend that the defendants’ sketch was the same as the sketch which had made Her Majesty the Queen laugh.”
“[The Defendants] represented that certain tests which had been made were tests in connection with the Defendants’ economiser, whereas in fact they were tests in connection with the Plaintiffs’ economiser. They represented that certain economisers which had been fitted for a number of purchasers, and which were in fact the Plaintiffs’ economisers, were the Defendants’ economisers, and in the correspondence which took place when they were negotiating for an order or had obtained an order for a trial, they then repeated in the most barefaced and dishonest manner those suggestions, stating that a number of customers, said to be satisfied customers, were customers for their article, whereas in fact they were customers who had ordered, and were satisfied with, the Plaintiffs’ article. … If that is not passing-off, I really do not know what is. It is perfectly true, and I am willing to assume, that not one single customer who went to the shop (I use the word ‘shop’ of course metaphorically, it was not a shop at all; it was done by orders by post and by travellers and so forth) had ever heard of the plaintiffs or ever heard that they had put on the market an economiser. That, to my mind, matters not one bit when it is realised that those customers were coming with the intention of getting goods from a particular source, namely, the same source as those from which the satisfied customers had got their goods.”
“I do not intend to decide whether there is a form of the tort to be known as reverse passing-off. It is sufficient, I think, to hold that the facts alleged can properly be regarded as within the tort of passing-off. …. the claim in passing-off is not … ruled out because it is not alleged that any member of the public, looking at any of the photographs, would associate any conservatory with the plaintiffs. No person affected by the misrepresentation in Samuelson’s case, or in the Plomien case … would have known who the plaintiff in any of those cases was. That did not stop the plaintiff being injured in his property rights in the business or goodwill. Nor would it matter if there was nothing in any photograph to link the conservatory there depicted with the plaintiffs in any way. Next, it would not matter that there was no allegation that there would be any confusion in the minds of the public. The concept of confusion, in my view, is irrelevant when the misrepresentation leaves no room for confusion. The prospective customer here is not left to perceive the difference between the two allegedly similar products, he is told simply and untruthfully that Custom Built designed and constructed the conservatories which provide the evidence for the experience, skill and reputation of the plaintiffs.”
“83. A permission to brand goods as one’s own entitles the licensee to use the commercial reputation of the goods or services to make sales of that product in its own name. To that extent, it permits the licensee to accrue goodwill generated by the product for its own benefit. But it does not, without more, carry with it the right to trade on the reputation of those goods in order to market a similar product which does not originate from the same source as if it does. Such conduct would be a misrepresentation by that defendant and one not authorised by the Agreement. 84. The difficult question is whether the misrepresentation is actionable by the claimant as passing off when, by virtue of the White Label arrangements, it has allowed any goodwill and reputation to be enjoyed by the defendant. It seems to me at least arguable that under the Reseller Agreement, the goodwill in the existing service can be used by ML to boost its trade in that product, but cannot be used to market a product which has a quite different technical origin. The law will notionally attribute to the claimant the reputation built up in the product for the purpose of protecting it from misuse in relation to other products. This is difficult law and it may be that the correct answer is that this is not passing off at all, but a species of injurious falsehood actionable on slightly different principles.”
“(i) By reference to the foregoing, the Claimant is the owner of valuable goodwill in the Elixir Serum by reference to the unregistered trade marks ‘Kate McIver’ and ‘Secret Weapon’ and the First Label and the Second Label; (ii) Further or in the alternative, by reference to the foregoing, the Claimant is the owner of valuable goodwill as the originator of the Elixir Serum supplied to the First Defendant and Ms Dyment under the unregistered trade marks ‘Kate McIver’ and ‘Secret Weapon’ and the First Label and the Second Label; (iii) For the avoidance of doubt, the Claimant does not aver … that the Claimant’s goodwill is held in the unregistered trademarks per se, but that … the Elixir Serum became associated in the unregistered trade marks, such that there arose goodwill separately to the First Defendants’ goodwill (in that respect, the Claimant will rely upon the decisions in Bristol Conservatories Custom Built Ltd [sic] … and ScanSafe Ltd v MessageLabs Ltd …; … (iv) The First Defendant and Ms Dyment have misrepresented that Ms Dyment rather than Ms Tang was the originator of the Elixir Serum as follows: (a) The First Defendant and Ms Dyment have falsely stated via the website www.katemciverskin.co.uk and the Instagram and Facebook accounts @katemciverskin that Ms Dyment created the Elixir Serum … (b) The First Defendant and Ms Dyment have falsely stated to the press that Ms Dyment created the Elixir Serum … (v) The First Defendant and Ms Dyment have by utilising the same/or similar unregistered trade marks mispresented that the origin of the First Imitation and the Second Imitation is the same as the Elixir Serum, namely the Claimant and/or Ms Tang; (vi) The First Defendant and Ms Dyment by referring to the Second Imitation as ‘Secret Weapon Original’ have misrepresented that the Second Imitation is the Elixir Serum; (vii) The misrepresentations of [the] First Defendant and Ms Dyment have caused damage to the Claimant’s goodwill as follows: … (b) The First Defendant has been purchasing the First Imitation and the Second Imitation from a third party whilst marketing them so as to indicate the same origin as the Elixir Serum, in circumstances where the Claimant could have supplied the Elixir Serum to the First Defendant; (c) The First Defendant’s customers have been purchasing the First Imitation and the Second Imitation thinking it is the same as the Elixir Serum or thinking that it has the same origin as the Elixir Serum, in circumstances where the Claimant markets the Elixir Serum for sale and could supply to those customers directly; (d) The change in ingredients and deterioration in quality of (at least) the First Imitation and (potentially) the Second Imitation and the acne and skin problems suffered by The First Defendant’s customers are such as to create a negative impression in the mind of the public as regards the originator of the Elixir Serum, namely the Claimant and/or Ms Tang; (e) The misrepresentations in and of themselves damage the Claimant’s goodwill because they create a false impression in the mind of the public that Ms Dyment created the Elixir Serum and that the First Imitation and/or the Second Imitation are the same as the Elixir Serum and/or originate from the Claimant and/or Ms Tang.” (a) The First Defendant and Ms Dyment have falsely stated via the website www.katemciverskin.co.uk and the Instagram and Facebook accounts @katemciverskin that Ms Dyment created the Elixir Serum … (b) The First Defendant and Ms Dyment have falsely stated to the press that Ms Dyment created the Elixir Serum … … (b) The First Defendant has been purchasing the First Imitation and the Second Imitation from a third party whilst marketing them so as to indicate the same origin as the Elixir Serum, in circumstances where the Claimant could have supplied the Elixir Serum to the First Defendant; (c) The First Defendant’s customers have been purchasing the First Imitation and the Second Imitation thinking it is the same as the Elixir Serum or thinking that it has the same origin as the Elixir Serum, in circumstances where the Claimant markets the Elixir Serum for sale and could supply to those customers directly; (d) The change in ingredients and deterioration in quality of (at least) the First Imitation and (potentially) the Second Imitation and the acne and skin problems suffered by The First Defendant’s customers are such as to create a negative impression in the mind of the public as regards the originator of the Elixir Serum, namely the Claimant and/or Ms Tang; (e) The misrepresentations in and of themselves damage the Claimant’s goodwill because they create a false impression in the mind of the public that Ms Dyment created the Elixir Serum and that the First Imitation and/or the Second Imitation are the same as the Elixir Serum and/or originate from the Claimant and/or Ms Tang.”
“56. The defendants pointed out that Ms Tang never traded under the names ‘Kate McIver’ or ‘Secret Weapon’, never used any of the own-brand labels used by Ms McIver and never traded as the creator of Elixir serum. She did not, but I fail to see the relevance of this. YNNY's case is that her business in sales of the serum acquired goodwill and that goodwill was associated in the public mind with the trade name ‘Elixir’. I find that this case is established. 57. Ms McIver began sales to her customers of the serum made by Ms Tang in October 2017. At that time and until April 2018 sales were made using the Original Label. Ms McIver switched to the First McIver Label in April 2018 and was still using the First McIver Label on6 June 2018 . Both the Original Label and the First McIver Label prominently featured the trade name ‘Elixir’. The significance of using that trade name was that Ms McIver thereby represented that the serum marketed by her was the same as the Elixir serum marketed by others, including Ms Tang. This representation was true. 58. Ms McIver’s statement on6 June 2018 that she had put her life and soul into researching and creating the ‘Kate McIver’ serum, can only have been taken as meaning that she had created the Elixir serum she was selling. No alternative was suggested. Thus, Ms McIver's express representation was that she was the creator of the Elixir serum. By inevitable implication, she also made the further representation that she was the creator of the Elixir serum sold by anyone else, including Ms Tang. Both the express and the implied representation were false. Ms McIver repeated these representations on 8 June and1 October 2018 . It was repeated by her again in her quoted comments in the Liverpool Echo on1 December 2018 and in her radio interview the next day. 59. The misrepresentations continued at least until March 2019. From that date both the First and Second Pelham Reformulations were marketed. The Second Pelham Reformulation had many more changes than had been the case with the First Pelham Reformulation. However, use of the word ‘original’ still implied that it was a throwback to the earlier formulation. Also, as indicated above, a promotion using photographs of Danielle Lloyd were still used, which implied that the serum marketed after March 2019 had not significantly changed from that marketed in October 2018 – Ms Tang’s serum. 60. I find that the changes made to the formulation of the serum that resulted in the Second Pelham Reformulation were sufficiently extensive for KMS to represent that it was no longer the Elixir serum created by Ms Tang. However, KMS continued to sell the First Pelham Reformulation and for the reasons I have given, the message presented by KMS in respect of both reformulations was that it was the same serum as had been sold as the Elixir serum. In my view, Ms McIver and KMS remained very attached to the attractive story of Ms McIver’s having created their serum because of her efforts to recover from the effects of chemotherapy and through her own research conducted during her recovery from chemotherapy. They continued to state that this was the serum they were selling. This is supported by Kathryn Orr’s interview for the Ladies of Liverpool podcast, the prominent use of ‘Original’ on the packaging and the repeated use of the Danielle Lloyd photographs to promote the product. I take the view that the misrepresentations continued after March 2019.”
“64. YNNY relied on two heads of damage. The first was loss of sales, although this was based on no more than an inference that there must have been lost sales. I do not find that proved. On30 November 2018 Ms McIver terminated her arrangement with Ms Tang with immediate effect so there can have been no lost sales from December 2018 onwards. Before that date it is possible that the misrepresentation led to an increase in Ms McIver's sales but that would have meant an increase in Ms Tang's sales. It is also entirely possible that any boost to Ms McIver's sector of the market for Elixir caused by her misrepresentations at any time was limited to that sector, having no significant impact on sales of Elixir through other channels; it just expanded the overall market before30 November 2018 and/or afterwards. In short, the inferred loss of sales on the part of Ms Tang and/or YNNY was not established on the evidence. 65. YNNY was on stronger ground in its claim that there has been damage to the reputation of Elixir in the context of a skin serum, that there is a risk of this recurring and of loss of the distinctiveness of the Elixir brand name. There was evidence of at least one customer finding that the First Pelham Reformulation caused a skin break out. Continued branding by KMS of its product as ‘original’, which suggests that it is a return to the first formulation of Ms McIver’s Elixir product, is likely to leave YNNY still exposed, at least to some degree, to quality issues in respect of KMS's product. Further, the misrepresentation up to the present and the possibility of continuing misrepresentation risks rendering Elixir as the name of a generic type of skin serum.”
“In my view there was a bare licence granted by Ms Tang to use that text. However, as conceded in the pleaded Defence, that licence ran only so long as Ms McIver bought her serum from Ms Tang. The licence came to an end on30 November 2018 . Use thereafter, if there has been any, was infringing use.”