The Classical Trinity of Passing Off

In one line

A passing off action has three ingredients, goodwill, misrepresentation and damage, and every Indian judgment on the subject begins by reciting them.

The formulation

Lord Oliver in Reckitt & Colman Products Ltd. v Borden Inc., (1990) 1 WLR 491, the Jif Lemon case, reduced the earlier five guidelines to three elements. They are now called the CLASSICAL TRINITY:

• GOODWILL owned by the trader;
• MISREPRESENTATION;
• DAMAGE to that goodwill.

The facts, so you can hold on to it. The plaintiff sold lemon juice in a plastic container shaped like a lemon. The defendant copied the container.

That is the whole of what this chapter can attribute to the case, and it is enough, because the three words are what an answer needs.

The older statement, still quoted

Lord Diplock in Erven Warnink Besloten Vennootschap v J. Townend & Sons (Hull) Ltd., (1979) AC 731, the Advocaat case, stated FIVE characteristics of a valid passing off claim:

• a MISREPRESENTATION;
• made by a TRADER IN THE COURSE OF TRADE;
• to PROSPECTIVE CUSTOMERS or ULTIMATE CONSUMERS of goods or services supplied by him;
• CALCULATED TO INJURE the business or goodwill of another;
• CAUSING or LIKELY TO CAUSE ACTUAL DAMAGE.

The facts. Makers of a drink called Advocaat sought to restrain a rival from selling a different drink under that name.

The relation between the two lists. Lord Oliver compressed the five to three. Nothing was abandoned. Characteristics two and three of Advocaat are folded into "misrepresentation" in Jif; characteristic four is folded into "goodwill"; characteristic five becomes "damage".

An examiner who asks for "the ingredients of passing off" will accept either. The safe answer states the trinity, then adds that it is a compression of Lord Diplock's five characteristics, and gives both.

Broken down

Element one, GOODWILL. The plaintiff must own goodwill or reputation attached to the goods or services he supplies, in the mind of the purchasing public, associated with the get up, name or mark under which they are offered, so that the get up is recognised as distinctive of his goods. Goodwill is the subject of chapter 1040.

Element two, MISREPRESENTATION. The defendant must make a misrepresentation to the public, whether or not intentionally, leading or likely to lead the public to believe that his goods or services are those of the plaintiff. It need not be a lie in words. Copying a get up is a representation by conduct. Misrepresentation is the subject of chapter 1050.

Element three, DAMAGE. The plaintiff must suffer, or in a quia timet action be likely to suffer, damage by reason of the erroneous belief engendered by the misrepresentation.

The words "by reason of" carry weight. The damage must flow from the misrepresentation, not merely from the fact that a competitor has entered the market.