Elements of Passing Off
IN the previous article, we started a conversation on passing off and how it constitutes wrongful competition. The remedy is available at common law for an affected party without a registered trademark. This particular week, we are going to look at the elements for passing off and the legal remedies available for an affected party.
For a party to establish a claim for passing off, three key requirements must be met:
◆ Goodwill - you must prove that you own a ‘reputation’ in the market that the public associates with your specific product or service.
◆ Misrepresentation - you must show that the other party has caused confusion and deceived or misled the customers into believing that their goods and services are actually yours.
◆ Damage - you must prove that the misrepresentation damaged or is likely to damage your goodwill, or cause actual or foreseeable financial or reputational loss.
The locus classicus case on goodwill is F. W Woolworth & Co (Zimbabwe) (Pvt) Ltd v The W Store & Anor 1998 ( 1) ZLR 93 ( H), see also Kellogg Co case. In Cairns Food Limited v Netrade Marketing (Pvt) Ltd SC 106/21 MATHONSI JA defined passing off as follows: “It is apparent that passing off seeks to protect a product from the deceptive tendencies of a competitor who represents its products as that of the other…Therefore, proof of reputation is a pre-requisite for passing off to be established. See also Woolworths Zimbabwe Ltd v The W Store 1998 (2) ZLR 402 (SC).” See also Office Cleaning Services Ltd v Westminister Office Cleaning Association [1944] 2 ALL ER 269 B; Unilever PLC &Anor v Vimco (Pvt) Ltd HH 175/2004...”
Goodwill in a mark can be particularly difficult to define. The reputation and goodwill of a business are generally considered as something that provides an identity to a business and its goods or services, and distinguishes them from those of its competitors.
Goodwill by simple definition is the good name and reputation of a business concern. The onus is on an applicant to establish reputation and goodwill enjoyed by him in connection with the trademark, getup and product concerned.
Whilst goodwill is intangible, the enquiry to establish it is factual, see Bon Marche (Pvt) Ltd v Brazier & Anor 1984 (2) ZLR 50 (SC); Parker –Knoll Limited international Limited 1962 RPC 278 (HL) [UK].
A party claiming passing is entitled to ask the court to infer the existence of goodwill from the proved set of facts.
This inference may be drawn from aural, visual characteristics of the product concerned, the nature, the extent to which the mark has been put and evidence from members of the public who use the product where available.
An applicant in a passing off claim is required to show evidence of sales, participation in the market, any advertising carried out, and awards if any, web pages or social media references, surveys in proving goodwill.
In Adidas AG & Anor v Pepkor Retail 2013 BIP 203(SCA), the court remarked thus: “….An aggrieved trader can establish such distinctiveness (or reputation) in respect of the goods or merchandise by adducing evidence as to the manner and the scale of the use of the name, mark or getup which justifies the inference that the name, mark or getup has become recognised by substantial section of the relevant public as distinctive of the aggrieved trader’s ‘’goods and merchandise’’
Remedies for passing off
If you are successful in a passing off claim, there are several remedies available. You can:
◆ apply for an interdict to prevent the business from using your trade mark or goodwill. In the past we dealt with interdicts. You can read the article so that you can have a better appreciation of this side of the law.
◆ sue for damages or seek account for lost profit
◆ apply to have the infringing goods destroyed
◆ request an inquiry to establish loss
Constantly work with your attorneys to ensure that key intellectual property of the organisation is safeguarded. There are people and organisations which are ready to prey on your sweat. You thus need to be vigilant. It is my hope that this article has helped you in some way. LEGAL DISCLAIMER: The material contained in this post is set out in good faith for general guidance in the spirit of raising legal awareness on topical interests that affect most people on a daily basis.
They are not meant to create an attorney-client relationship or constitute solicitation.
No liability can be accepted for loss or expense incurred as a result of relying in particular circumstances on statements made in the post. Laws and regulations are complex and liable to change, and readers should check the current position with the relevant authorities before making personal arrangements.
◆ Arthur Marara is a corporate law attorney practicing law in Harare, Zimbabwe. He is also a notary public and conveyancer. He is also passionate about employment law, commercial law, family law and promoting legal awareness and access to justice. He writes in his personal capacity. You can follow him on social media (Facebook Attorney Arthur Marara), or WhatsApp him on +263780055152 or email attorneyarthurmarara@gmail.com.