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Commentary>'Passing off' ruins a trader's goodwillKedian Francis - Legal Commentator |
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TRADERS AND manufac-turers, from time to time, experience significant reductions in profitability.
This may be due, in part, to inflation, excessive import and export duties, or to loss of goodwill occasioned by acts of 'passing off', that is, selling or otherwise packaging one's goods by using names, marks, letters, or other indicia.
The intent is to induce purchasers to believe that such goods are the products of another trader. For example, you might have seen the label 'Prado' on a handbag and thought it was 'Prada'; or mistaken the name 'Roberto Cavallo' for that of the famous fashion designer Roberto Cavalli, then you would have witnessed a 'passing off' of one trader's product for that of another.
Benefiting By False Means
These events are certainly evidence of the extent to which it has become commonplace for persons, seeking to make a dollar, to attempt to package or otherwise sell or carry on business in such a manner as to mislead the public into believing that their product or business is that of another trader or manufacturer. This is done in the hope that, by means of false or misleading devices, the trader may benefit from another's reputation.
For a trader to successfully claim that there has been a passing off in respect of his product, he must show that there has been a misrepresentation made by another trader to prospective customers of his which injures his business or goodwill, but once proved, he may be entitled to an injunction restraining the guilty trader.
Passing off may be established where a trader:
a. Markets his goods as that of another trader;
b. Imitates the 'get up' or appearance of other traders' goods;
c. Trades under a name so closely resembling that of another trader as to be likely to mislead the public into believing that both traders' business are one and the same;
d. Markets goods under a trade name already appropriated for goods produced by another trader, or under a name so similar to the traders' name as to be mistaken for it;
e. Markets goods with the trade mark of a trader or with any deceptive imitation of such a mark.
Establishing A Reputation
The infringing trader will be liable even where his conduct is entirely honest, innocent and without intention to deceive. The relevant consideration is whether the infringing traders' activities are likely to deceive the public.
For a trader to succeed in his claim, he has to also establish that his product or business has acquired a reputation in the particular country. For example, a trader involved in the business of selling jerk chicken under the name 'Pan-Jerk' must show that his jerk chicken has, over the years, acquired in Jamaica a reputation such that consumers may identify that jerk chicken as his product. He must show that his goodwill is known to and recognised by the public or by a particular section of the public by way of a name, mark, 'get up' or other accompaniment which they may associate with his jerk chicken's name.
Negative Impact On Trader
It would not be enough for that trader to show that he has acquired goodwill in that product elsewhere. He must show that he has acquired goodwill here in Jamaica to be able to sue for 'passing off' in Jamaica.
Whatever form the 'passing off' takes, it is certain to adversely impact the business of the affected trader, particularly where the guilty trader's product is inferior, and is likely to turn consumers away from the authentic product.
It is, therefore, incumbent on all traders to keep a keen lookout for possible passing off so that they may nip it in the bud before it affects their business and, ultimately, their profitability.
Kedian T. Francis is an associate of the law firm DunnCox attorneys-at-law, Kingston.