Coleman (supra) where it was held that the law of passing off protected the Jif lemon, a plastic
lemon shaped and coloured container of the plaintiffs. The Jiff lemon had been on sale since
1956 and a considerable goodwill had built up associated with it and it was as was held by Lord
Oliver.
In the Ugandan case of Zeneca Ltd. V Vivi Enterprises Ltd. HCCS No. 842/94 Byamugisha J
(as she then was)held that a product which had been on the market for 25 years was sufficient
period for any product worth its salt to acquire a reputation and goodwill.
In the instant case it was submitted for the plaintiffs that their Marie Biscuit had been on the
market for at least 9 years at the time of the suit. This to my mind is also sufficient time to
establish goodwill. The plaintiff laboured to show sales that portrayed progressive sales which
ably set up the argument for goodwill thus far.
Good will as stated above can also found in a product get up; that is a container together with its
shape or appearance. This was the position taken in the case of Hodgkinson and Corby Ltd V
Wards Mobility Services Ltd. [1995] FSR 169 where the claimant made a cushion for use by
permanently immobile persons to prevent pressure sores with a distinctive appearance. The
defendant was planning to sell a „lookalike‟ cushion though under a different trade name. It was
held that passing off could occur even when the appearance of goods had been copied and that
passing off was not restricted to taking a name, mark or sign. Although copying the appearance
of a product is not unlawful per se in the absence of infringing an intellectual property right, in
terms of passing off, the defendant must always do enough to avoid the deception.
The ability of purchasers to make subtle distinctions was considered to be a factor in the Privy
Council case of White Hudson & Co Ltd V Asian Organisation Ltd. [1964] 1 WLR 1466.
The claimant sold cough sweets wrapped in red wrappers in Singapore since 1953 which bore
the word „Hacks‟ with ingredients. From the 1958 the defendant sold cough sweets with a similar
colour and shape also wrapped in red but with the name „Pecto‟ printed on the wrappers.
It was held that the claimant had established a get-up in the red coloured wrapper that was
distinctive of his cough sweets and there was a danger of confusion especially as few purchasers
could read the words. It was stated that the defendant could have used another colour of wrapper
or used a prominent symbol on the wrapper to avoid confusion.
The authorities as discussed above demonstrate the plaintiff‟s case for goodwill in the get-up.
The plaintiff‟s get-up is predominantly red, with a picture of a biscuit and the plaintiff‟s logo.
The defendant‟s get-up on the other hand is similar in all respects except for the logo.
In light of the Hodgkinson & Corby case cited above the defendant ought to have done more to
distinguish its goods being that they were similar products and in the latter case the use of a
different colour or more prominent distinguishing mark could have been employed.
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