“(1) Applications for interim injunctions should be decided primarily on the balance of convenience, in the wider sense of that phrase, rather than on the relative strength of the parties’ substantive cases as they may then appear. (2) There is no rule of law that the court may consider the balance of convenience only if satisfied that the claimant has made out a prima facie case. (3) The court must, however, satisfy itself that there is a serious question to be tried. (4) An interim injunction should be refused if damages awarded at trial would adequately compensate the claimant and the defendant will be able to pay. (5) An interim injunction should be granted if the claimant’s cross-undertaking in damages would adequately compensate the defendant if successful at trial, and the claimant would be able to pay. (6) If, as will normally be the case, damages would not fully compensate either party, then the issue depends on the balance of convenience. (7) If other factors are finely balanced, the status quo should be maintained. (8) If the balance of convenience favours neither party, then the relative strengths of the parties’ respective cases on the merits may be taken into account if one case is disproportionately stronger.”
“19 The status quo to which Lord Diplock referred is as he clarified in the later case of Garden Cottage Foods Ltd v Milk Marketing Board [1984] A.C. 130; [1983] 3 W.L.R. 143; [1984] F.S.R. 23, the status quo immediately before the issue of proceedings, or the application notice if substantially later, rather than the status quo when the conduct complained of began. 20 In this case, the campaign began in January 2018. Pictures of Nike’s global ambassadors with the sign were posted on 11, 13 and21 January 2018 . The cease and desist letter was written on 22 January. The campaign was not promoted on Nike’s Instagram site until 7 February, and the YouTube video was released on 9 February. A number of events also took place during the half term week of 9–18 February 2018 . Although Miss Hoy, Nike’s solicitor, complained of undue delay in seeking an injunction, I do not consider that that is a fair criticism. Given that in the first place Nike’s solicitors were slow in responding to the complaints, and specifically asked FI not to take further steps until they had responded, and that, in the second place, for reasons that Ms Turner explained in her evidence, the contest is effectively one between David and Goliath. 21 In my judgment, the interval between the start of the campaign and the cease and desist letter is so short that the relevant status quo is that which pertained before the start of Nike’s campaign. To put the point another way, I do not consider that Nike can improve its position by pushing on in the face of reasoned complaints.”
“The “Jif Lemon” case is important in at least two respects. First, the House of Lords confirmed that each passing off case depended on its own facts. Secondly, their Lordships reverted to the “classical trinity” for their definition of the elements of the cause of action. Lord Oliver put the matters a successful claimant must prove as follows: “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 belief that the goods or services offered by him are the goods or services of the plaintiff. 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.”
“[quoting Lord Langdale] ‘a man is not to sell his own goods under the pretence that they are the goods of another man …’. Accordingly a misrepresentation achieving such a result is actionable because it constitutes an invasion of proprietary rights vested in the plaintiff. However, it is a prerequisite of any successful passing off action that the plaintiff’s goods have acquired a reputation in the market and are known by some distinguishing feature. It is also a prerequisite that the misrepresentation has deceived or is likely to deceive and that the plaintiff is likely to suffer damage by such deception. Mere confusion which does not lead to a sale is not sufficient.” “It is not essential … that the defendant should misrepresent his goods as those of the plaintiff. It is sufficient that he misrepresents his goods in such a way that it is a reasonably foreseeable consequence of the misrepresentation that the plaintiff’s business or goodwill will be damaged.”
“The advantage of the classical trinity, as restated in Jif, is that attention is properly drawn to the essential relationships between the three elements. In a true case of passing off, all three elements are intertwined. It is the existence of a mark or get-up with reputation distinctive specifically of the claimant’s goods or services which provides the necessary foundation for misrepresentation; the misrepresentation must be one which causes or is likely to cause damage to goodwill (in other words, the misrepresentation must be “operative” in the transaction and causative of the damage claimed); and damage to goodwill is at the heart of the cause of action. Goodwill itself is generated by trading activity, which is usually the source of reputation.”
“…this is not a branch of the law in which reference to other cases is of any real assistance except analogically.”
“The crucial point of reference for a shopper who wishes to purchase a Jif squeezy lemon is the lemon shape itself. Virtually no, if any, attention is paid to the label which that lemon bears. This is easily understood, for the shopper has no need to read the label, or pay any attention to it, in order to obtain the goods that she requires. Moreover, the evidence is that most people, when they get the lemon home, take off the label, which performs no useful function and is easily detachable, so that it is not consciously thereafter any part of the purchased product.” “the embossing of the word Jif on the true Jif lemons, is far from being easily legible, and certainly would not be seen by a glance at the shelf on which they were displayed, as any true surface graphics can be seen.” “In other words, to the vast majority of shoppers, `ReaLemon' spelled out in this way means nothing more or less than `real lemon' and is perceived as such and not as a brand.”
“….confusion in the shopper’s mind in relation to all three marks of the defendant’s lemons. None of them is really sufficiently distinctive nor are the labels such as to impinge sufficiently forcefully on the shopper’s attention, as to call immediately to mind that the item is not a Jif lemon….”
“Some think that copying is unethical; others do not. Often the copyist of today becomes the innovator of tomorrow. Copying is said by some to be part of the lifeblood of competition, the means of breaking de facto market monopolies and keeping down the price of articles not protected by special monopolies such as patents or registered designs. Others say that copyists are parasites on innovators. None of this matters. Certainly it is not the law that copying as such is unlawful: the common law (and I am concerned with the common law) leans against monopolies.”
“I turn to consider the law and begin by identifying what is not the law. There is no tort of copying. There is no tort of taking a man's market or customers. Neither the market nor the customers are the plaintiff's to own. There is no tort of making use of another's goodwill as such. There is no tort of competition. I say this because at times the plaintiffs seemed close to relying on such torts. For instance, Mr Morcom reminded me of the old adage “Anything worth copying is worth protecting”
“Not only must I apply the views of Lord Jauncey; I think the law would end up in difficulties if it were any other way. The alternative view of the law would allow a defendant, who is in fact deceiving the public, to continue to do so for some policy reason. It would have to be a very good reason indeed to allow the deception. The sort of suggested policy reason is that where there is a no-longer patented functional article, anyone should be free to copy. But so he is. What he may not do is to deceive the public and he must do enough to avoid that.”
“So when the court is concerned with the appearance of the article itself, if the ingredients of passing off are made out, there is no policy exception by way of defence. The defendant must always do enough to avoid deception to escape liability.”
“Public policy has more influence on the law of passing-off when what is in issue is the right to compete itself. The fact that the law has almost consistently refused to protect get-up alleged to consist of the appearance of the goods themselves (as opposed to their packaging) has undoubtedly been influenced by reluctance to give functional or aesthetic elements an indefinite protection potentially longer than for patents, registered designs or copyright.”
“Therefore the Board concludes that the shape of the bottle applied for departs sufficiently from those available on the relevant market with the consequence that the sign applied for does not fall foul of Article 7(1)(b) EUTMR.”
“(1) an elongate (meaning tall and thin) bottle having a slight arcuate taper from base to top, a prominent shoulder portion, and a neck of extended length; (2) the bottle being metallised, more specifically metallised in the colour gold; (3) the bottle being generally of clean appearance, that is to say without further adornment save the upper and lower ‘plates’ particularised below (noting that whilst not prominent in the case of flavoured versions of the vodka that flavour is printed together with a diagrammatic fruit indication about half-way up the bottle); (4) an upper plate, close to the top of the bottle comprising a plate surround (a square) within which is the name of the product Au79 in large font and below VODKA in capitalised lower case font; (5) a lower plate of secondary prominence, close to the base of the bottle and being of rectangular shape and containing three lines of text all capitalised, “5 TIMES DISTILLED”, “PREMIUM VODKA”, “40% ALC VOL | 70CL e”; (6) the term ‘plates’ herein is adopted to refer to the embossed nature of the labels and the text thereon, akin to a boilerplate; and (7) The substantial majority of the bottles are of 70 cl capacity although the Claimant also sells miniatures (5 cl) and magnums (150 cl) of identical shape but proportionately scaled.”
“[115] …it is important to distinguish between a defendant who takes a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader's goodwill. It has long been established that if it is shown that a defendant has deliberately sought to take the benefit of a claimant's goodwill for himself the court will not "be astute to say that he cannot succeed in doing that which he is straining every nerve to do": see Slazenger & Sons v Feltham & Co (1889) 6 R.P.C. 130 at p.538 per Lindley L.J. A trader who has taken the decision to live dangerously is in a different position, however. He has appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away. All must depend upon the facts of the particular case...”
“[35] …if the defendant's intent is that the name and/or get-up of its product will bring to mind the claimant's product but not lead to any false assumption on the part of the public as to any sort of trade connection (including common manufacturer or a licence), then at best from the claimant's point of view this is neutral. Arguably, if the defendant is clearly shown to have a highly accurate perception of the target market, it helps the defendant.”
“13. In respect of the Second Defendant, he has committed the various acts of which complaint is made personally and is therefore liable for the said acts. In addition, the Claimant relies upon the following: (1) That the Defendants claim (e.g. in the Wales Online advertorial) that preparatory acts to the NE10 Product launch have been undertaken for the past three years. Yet the First Defendant was only incorporated on3 September 2021 (less than one year ago) and cannot have performed acts prior to that date. It is a reasonable inference that those acts were performed by the Second Defendant. (2) The meeting between the Second Defendant Mr Hogan and directors of the Claimant which took place in February 2021, that is to say several months before the First Defendant was incorporated. (3) From the date of its incorporation, until19 August 2022 , the Second Defendant was the sole director of the First Defendant. (4) On incorporation, the Second Defendant held 74 of the 100 shares issued in the First Defendant. He was listed as an individual with significant control. 14. Further and in the alternative, the Second Defendant has acted together with the First Defendant in pursuance of a common design and is liable for the acts of the First Defendant as a joint tortfeasor. The particulars set out in the previous paragraph are repeated.”