Passing Off - International intellectual property rights

Commercial rights may sit with a Party that has registered intellectual property rights. However if they have not they may rely upon the implied right of passing off since they own the goodwill (for example the ‘brand name’) and as such will be protected from ‘rip-offs’.

The remedies for this are injunction; damages; an account of profits; and an order to deliver up or the destruction of the offending items.

To succeed the aggrieved Party would have to pass a three stage test, as follows:

1. Goodwill of his reputation by showing the Court sales figures and expenditure on advertising, by witness evidence and survey evidence; and

2. Misrepresentation by the Defendant in the course of trade by showing evidence of confusion by way of survey evidence or witness evidence. The important factor is that the aggrieved Party show the consumer would be confused; and

3. Damage in respect of loss of profits (people buying the infringing product) and loss of reputation (because the infringing product is of an inferior quality and the customer thinks the aggrieved Party’s product is therefore inferior).

The aggrieved Party may also rely upon the implied right of confidentiality to protect them from the other offending Party revealing the information, by way of unauthorised disclosure of the aggrieved Party’s product, before the aggrieved Party applied for Patent registration.

It is case-law rather than statute that offers this protection. However again express confidentiality agreements offer more protection than relying upon the doctrine of implied confidentiality.

The remedies for breach are an injunction to prevent disclosure and use of the information that is a restraining order in advance. Compensatory damage, an account of the defendant’s profits or an order for delivery up or destruction under oath.

The aggrieved Party may also rely upon the common law protection of copyright to prevent the offending Party from copying the designs. The infringement of this right is measured in terms of ‘primary’ and ‘secondary’ infringement. The primary infringer is liable regardless of his state of mind whereas the secondary infringer is only liable if he knew or had reason to believe that he was dealing with an infringing copy.

The remedies for the aggrieved Party are under the CDPA 1988, s 100 to allow them to seize offending articles, provided the police are informed beforehand and it is used against market or street traders. Section 107 further gives rise to criminal liability for making or dealing with infringing articles. Section 108 and 114 allow for the delivery up or destruction of infringing copies. Section 111 allows for an order to prevent the importation of infringing copies.

Author: Robert Shawyer

Date: March 2010

For more information please contact Robert Shawyer by telephone 02920 464 612 or by email on Robert.shawyer@alway-associates.co.uk

Robert Shawyer

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