A reminder of the test for passing offPrint publication
Passing off occurs where a third party uses an (unregistered) trade mark without the consent of the owner of that trade mark.
UK case law has established that to succeed in a claim for passing off it is necessary to show that: (1) the claimant trades in the goods and services to which the mark applies; (2) the public associate the mark with the claimant’s goods or services; (3) the claimant has built up a reputation in the goods and services and the goodwill is attached to the mark; (4) a third party has made misrepresentations to the public, whether intentionally or not, leading, or likely to lead, the public to believe that the goods or services offered to them are the claimant’s goods or services; and (5) this has caused damage for the claimant.
In Gama Healthcare Ltd v Pal International Ltd , each party manufactured and supplied clinical wet wipes for use in the health care sector. The claimant maintained that the get-up adopted by the defendant for its wipes was so similar to its own packaging that it was likely to lead members of the health care industry to the erroneous belief that the defendant’s wipes were those of the claimant or were connected to the claimant. Each used green packaging for disinfectant wipes and yellow packaging for detergent wipes.
The Intellectual Property Enterprise Court found that the claimant had failed to establish goodwill in its get-up or that average consumers – who in this case were taken to be hospital procurement departments – saw the green packaging as a bade of origin. In particular, the evidence showed that it was convention in the industry at the time to use a green packaging to denote a disinfectant wipe and a yellow packaging to denote a detergent wipe.
Whilst there was evidence to suggest that the defendant had knowingly followed the claimant’s packaging, the failure to establish goodwill was fatal to the claimant’s case.
This case is a useful reminder of the requirements to establish passing off.
  EWHC 75 (IPEC)