I am a full-time solicitor with three years' post qualification experience. I am employed as a professional negligence solicitor with particular expertise in clinical negligence. I work for a top-50 law firm with offices in London. As a result I have access to a wealth of legal resources. I am also a part-time researcher and I have a vast knowledge of all aspects of law including tort, contract, property, employment, international, public and private law. However, due to my wealth of resources I am able to undertake research in almost every area of law. I also intend to undertake a Masters degree in insurance law with a London university.

This assignment will critically assess how the law of passing off protects the functional and the descriptive. This assignment will also look at the extent of this protection, and this will be achieved through a detailed examination of the case law in this area.

To assess how passing off protects the functional and descriptive it is important to first attempt a definition of passing off. The action for passing off is diverse and has altered many times to reflect commercial changes. Whilst this is admirable, it makes formulating a precise and accurate statement intensely difficult (Evren Warnink BV v Townend [1979] AC 731). However, some broad principles can be drawn from Lord Oliver’s decision in Reckitt & Coleman Products v Borden Inc. ([1990] RPC 340 at 499). In this case, Lord Oliver reduced the elements required to bring a case of passing of to "the trinity of confusion leading to deception, and damage". Confusingly, in the same case Lord Fraser indicated an entirely different test, which was held in subsequent litigation, should be applied alongside Lord Oliver’s test 9 Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik [1984] FSR 413). Passing off has in essence two functions, these are the protection of the trader against the unfair competition of his rivals, and the protection of consumers who would otherwise be confused as to the origins or nature of the goods or services, which they are offered. As copyright protects creativity and patents protect an invention, passing off protects the acquired reputation; the result of prolonged human efforts.

It is important to internalise the concept that passing off seeks to protect not the mark (for this is the job of trademark law), but the reputation that that mark represents. That is to say it seeks to protect "the attractive force that brings in custom ... it has the power of attraction sufficient to bring customers home to the source from which it emanates (IRC v Muller & Co's Margarine [1901] AC 217, p.224)." An injunction (American Cyanamid Co v Ethicon Ltd [2001] 1WLR 194) will be awarded against "a person, competing in trade, who seeks to attach to his product a name or description with which it has no natural association so as to make use of the reputation and goodwill which has been gained by a product genuinely indicated by the name (Bollinger v Costa Brava Wine co. Ltd [1960] ch.262)." It follows therefore that the name or description, representing the mark, must be sufficiently individual so as to have a causative impact on the consumer’s behaviour. The damage that can be caused by passing off, and that which the law seeks to protect, are risks that the claimant may be exposed to by its consumers (Sony K K v Saray Electronics (London) Ltd [1983] FSR 302) or lost opportunities to expand geographically (Chelsea Man Menswear v Chelsea Girl Ltd [1987] RPC 189) or into related products or loss of licensing opportunity, although the law will consider each individual claim on its merits (Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501).

In Parker Knoll v Knoll ([1962] RPC 243), International, an English furniture maker acquired their name and mark from a type of spring which was invented in the 1930s, by Wilhelm Knoll of Stuttgart. A nephew of Knoll, who had set up a company called Knoll International in the US, wished to enter the UK market. The House of Lords held that the US-based company would not be permitted to use the name "Knoll" as Parker Knoll had acquired a secondary meaning in the UK. In contrast, in the case of Efax.com Inc v Mark Oglesby (Masons Computer Law Reports [August 2000]) an American Company which used "efax.com" as their domain name with allegedly 5,000 customers in the UK were not allowed an injunction against "efax.co.uk". The reason for this as Parker J observed was that "efax", in his opinion, was essentially descriptive and was an example of general e-language terminology that had crept into common use. Further, he added that confusion, if any, which was caused by the similarity of names, resulted from the descriptive e-language and not from any misrepresentation on the part of the defendant.

Next we must consider misrepresentation as this is one of the key findings in any successful action for passing off. Misrepresentation is the intentional or innocent "misappropriation" by the defendant of the claimant's reputation in a way that is likely to cause confusion in the minds of purchasing consumers. Misrepresentation for the purposes of the law may also be a true statement which subsequently becomes false (With V O Flanagan [1936] Ch 575) and a statement which, while literally true, nonetheless causes its receiver to be misled (Frank Reddaway & Co Ltd v George Bamham & Co Ltd [1896] AC 199).

Confusion is used, not in the sense of not knowing whose products the public is buying, but in the sense that the misrepresentation by the defendant causes the general public to think that the goods or services of the defendant are in fact those of, or those associated with, the claimant (See the 'Corona' cigars dispute in Havana Cigar v Oddenino [1924] 1 Ch.179; Neutrogena v Golden [1996] RPC 473). In Reckitt & Colman v Borden ([1990] 1 All E.R 873), Reckitt & Colman had for a number of years sold lemon juice in plastic containers which resembled natural lemons both in shape and in their colour. Borden subsequently began selling lemon juice in comparable containers. However, Borden claimed that they had, in order to distinguish their product and avoid confusion, attached a suitably distinctive label to their container. An injunction was granted against Borden to prevent them from marketing their product in any container so nearly resembling the JIFF lemon-shaped container. As Lord Oliver explained, "... where the article sold is conjoined with an object ... of a shape or configuration which has become specifically identified with a particular manufacturer, the latter may be entitled to protection against the deceptive use in conjunction with similar articles of [sic] objects fashioned in the same or a closely similar shape ... The deception alleged lies not in the sale of plastic lemons ... but in the sale of lemon juice ... in containers so fashioned to suggest that the juice ... emanates from the source with which the containers of those particular configurations have become associated in the public mind (Ibid. at 884)."

As an example of the diversity of the law of passing off, the protection afforded by this law was extending in the case of Edmund Irvine v Talksport Ltd ([2002] EWHC 367), in which it was recognised that a false representation by a trader that its product or service is certified by an individual may give rise to a cause of action in passing off. As Laddie J., noted, "This is an important point of principle, as it recognises that in some circumstances the tort of passing off may give one an enforceable right in one's own name and image." Alarmingly though, Irvine's remedy for this infringement of his rights was a sum in damages that fell far short of the amount he would normally receive from such an endorsement. This decision appears to run contrary to the earlier decision of Harrods v Harrodian School ([1996] R.P.C. 697, 713), in which Millet LJ held that: "It is not in my opinion sufficient to demonstrate that there must be a connection of some kind between the defendant and the plaintiff, if it is not a connection which would lead the public to suppose that the plaintiff has made himself responsible for the quality of the defendant's goods or services."

The ambit of passing off was once again extended even further in the case of BT Plc v One In A Million ([1999] F.S.R. 1). In this case the defendant registered a large number of internet domain names involving the names or trademarks of well-known companies, without their consent. At the time of litigation, none of these domain names had been used as active sites, but rather the defendant accepted that part of his scheme was to use his "blocking registration" to sell the name on to its "legitimate" user or threaten to use it or sell it on to third parties. The companies were objecting to the registration of domain names without any active use. The Court of Appeal reacted to this "unfair competition" by finding that the case fell both within standard passing off and the doctrine of instruments of deception. The feeling of the court is that such "dishonesty" by the defendant needed to be stopped and that the tort of passing off could be adapted to meet this need.

To return to the question as to how the tort of passing off protects the descriptive and the functional, it has been demonstrated through case law, that the law increasingly recognises the need to protect the descriptive and the functional. This, however, is not a statement that has always been true, and it is only in recent years that we have seen the law of passing off extended in such a way as to protect the descriptive and the functional. The difficulty that the court faces in such situations is not to impede on the role of the copyright and trademark law. It is argued, therefore, that where the tort of passing off does not protect the descriptive and the functional, the respective copyright and trademark rules do.

Bibliography

Cases
Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik [1984] FSR 413

American Cyanamid Co v Ethicon Ltd [2001] 1WLR 194

Bollinger v Costa Brava Wine co. Ltd [1960] ch.262

BT Plc v One In A Million [1999] F.S.R. 1

Chelsea Man Menswear v Chelsea Girl Ltd [1987] RPC 189

Edmund Irvine v. Talksport Ltd [2002] EWHC 367

Efax.com Inc v Mark Oglesby Masons Computer Law Reports [August 2000].

Evren Warnink BV v Townend [1979] AC 731

Frank Reddaway & Co Ltd v George Bamham & Co Ltd [1896] AC 199

Harrods v. Harrodian School [1996] R.P.C. 697, 713

Havana Cigar v Oddenino [1924] 1 Ch.179

IRC v Muller & Co's Margarine [1901] AC 217

Neutrogena v Golden [1996] RPC 473

Parker Knoll v Knoll [1962] RPC 243

Reckitt & Coleman Products v Borden Inc [1990] RPC 340 at 499

Sony K K v Saray Electronics (London) Ltd [1983] FSR 302

Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501

With v O Flanagan [1936] Ch 575

Books
Bainbridge D, (2002) "Intellectual Property Law", Harlow, Fifth Edition

Cornish W, (2003) "Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights", Sweet and Maxwell, Fifth Edition

Phillips J & Firth P, (2001) "Introduction to Intellectual Property Law", Butterworths Lexis Nexis, Fourth Edition

Torremans P, (2005) "Intellectual Property Law", Oxford University Press, Fourth Edition