The law therefore restrains one trader from passing off the goods as being those of another trader
this being the essence of the action under misrepresentation. This was discussed in the case of
Spalding & Bros v AW Gamage Ltd (1915)84 LJ Ch 449 where the defendant advertised
defective footballs as „orb‟ balls a description of the claimant. An injunction was granted in
favour of the claimant and Lord Parker considered the nature of passing off saying:
‘The more general opinion appears to be that the right is a property
right…property in the business or goodwill likely to be injured by the
misrepresentation.’
A misrepresentation is a false description made consciously or unconsciously by the defendant.
Case in point is that of Arsenal Football Club plc V Reed [2001] RPC 922 where it was held
that for passing off to have occurred customers or ultimate consumers must have been deceived
with a real likelihood of confusion.
Counsel for the plaintiff relied on the case of Neutrigena Corpn V Golden Limited [1996]
RPC 473 at 481 where it was held that the question is whether the defendant‟s mark so nearly
resembles the claimant‟s mark as to be likely to deceive or cause confusion. The court went on to
state that there is a passing off even if most of the people are not fooled most of the time but
enough of the time.
In the instant case, I have already found that the get-ups are indeed similar. However even when
there are competitors of similar products goodwill in an existing product should be protected (see
Erven Warnink Besloten Vennootschap v Townend & Sons (Hull) Ltd [1979] AC 731)
Intention to pass off on the other hand need not be fraudulent for a fraudulent motive is not
necessary. Innocence is no defence as the main thrust of the law of passing off is the protection
of goodwill. It is sufficient that injury is a reasonably foreseeable consequence of the
misrepresentation (see Taittinger SA v Allbev Ltd [1993] FSR 641 at 667 per Peter Gibson LJ).
This argument is equally asserted in the case of Harrods Ltd. V Harrodian School Ltd. [1996]
RPC 697 where Millet LJ held at 706:
„Deception is the gist of the tort of passing off , but it is not necessary for a plaintiff to
establish that the defendant consciously intended to deceive the public if that is the
probable result of his conduct. Nevertheless, the question why the defendant chose to
adopt a particular name or get up is always highly relevant.’
In this case the defendant company relies on trade practice for the choice of its get up resulting
from a royal wedding in 1874 which adopted the colour red. This however I have already found
is not a uniform practice for Marie biscuits as other colours are also used in different parts of the
world and is therefore not sufficient to displace the test of misrepresentation.
8