In order to succeed in a passing off action the basic tests to be met include the existence of
goodwill, misrepresentation and damage. These emanate from the case of Reckitt & Colman
Products Ltd. V Borden Inc [1990] 1 All ER 873 as deduced by Lord Oliver from the list laid
down by Lord Diplock in the case of Spalding & Bros V AW Gamage Ltd (1951) 84 LJ Ch
449. These included existence of a misrepresentation, made by a trader in the course of trade, to
prospective customers of his or ultimate consumers of goods or services supplied by him, which
is calculated to injure the business or goodwill of another trader and which causes actual damage
to a business or goodwill of the trader by whom the action is brought or in a quia timet action
will probably do so.
This was cited with approval by this Court by Hon. Justice Yorokamu Bamwine in the case of
Anglo Fabrics (Bolton) Ltd & Anor V African Queen Ltd & HCCS 0632 of 2006.
As to the test for goodwill, a useful definition was given by Lord Macnaughten in
Commissioners of Inland Revenue v Muller & Co‟s Margarine Ltd [1901] AC 217 at 223 where
he held
„What is goodwill? It is a thing very easy to describe, very difficult to define. It is
the benefit and advantage of the good name, reputation and connection of a
business. It is the attractive force which begins in custom. It is the one thing
which distinguishes an old established business from a new business at its first
start. The goodwill of a business must emanate from a particular center or
source. However widely extended or diffused its influence may be, goodwill is
worth nothing unless it has power of attraction sufficient to bring customers home
to the source from which it emanates.’
In other words it can be said that, goodwill is the attractive force attached to the name, get-up or
logo which brings in custom. The onus is therefore on the plaintiffs to establish this goodwill as a
key ingredient to a passing off action.
The owner of goodwill has a property right that can be protected by an action in passing off.
Buckley LJ described the nature of the proprietary right in the case of HP Bulmer Ltd. V J
Bollinger SA [1978] RPC 79 at 93 as follows:
“A man who engages in commercial activities may acquire a valuable reputation
in respect of the goodwill in which he deals or of the services which he performs
or of his business as an entity. The law regards such reputation as an incorporeal
piece of property, the integrity of which the owner is entitled to protect.”
The learned author Bainbridge in his book Intellectual Property Law 8th Edition argues that
passing off goes beyond the type of mark that is registrable as a trademark and can also apply in
respect of containers and packaging. This was the position taken in the case of Reckitt &
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