Reckitt & Colman Products Ltd v Borden

Passing off requires proof of goodwill attached to an identifying get-up, a misrepresentation likely to lead the public to believe that the defendant's goods come from the claimant's source, and resulting or probable damage. Intention to deceive is unnecessary.

A product's container, shape or other dominant feature may form part of its protectable get-up when the public recognises it as denoting a particular trade source. Protection preserves goodwill against deception; it does not confer ownership of the article or a perpetual monopoly in its form.

Likelihood of deception is assessed in the actual market and customers are taken as found. A distinctive label does not prevent liability where purchasers ordinarily rely on another dominant feature and the label will not effectively distinguish the competing goods.

The respondents sold Jif lemon juice for many years in natural-sized, lemon-shaped plastic squeeze containers. Evidence accepted by Walton J showed that a substantial body of shoppers associated that shape and size specifically with Jif, paid little attention to its detachable label and would mistake the appellants' three proposed ReaLemon containers for Jif products.

In two quia timet actions, Walton J granted permanent injunctions: [1987] F.S.R. 303. The Court of Appeal affirmed the passing-off decision while reversing an immaterial finding of fraudulent intention: [1988] F.S.R. 601. The respondents did not pursue their cross-appeal concerning fraud. The central issue before the House was whether the proposed get-ups were likely to deceive despite their different labels, or whether relief would improperly confer a monopoly in plastic lemon containers.

1. Appeal dismissed unanimously. Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle delivered the substantive speeches. Lord Brandon of Oakbrook and Lord Goff of Chieveley agreed with both. Lord Bridge of Harwich agreed, although reluctantly, because the trial judge's factual findings were not open to challenge.
2. Per Lord Oliver, passing off requires three matters: goodwill or reputation attached to goods or services through an identifying get-up which the public recognises as distinctive of the claimant's source; a misrepresentation, intentional or otherwise, leading or likely to lead the public to believe that the defendant's goods or services come from that source; and actual damage or, in a quia timet action, likely damage caused by that erroneous belief. Knowledge of the claimant's identity is immaterial if the public associates the goods with a particular source.
3. Per Lord Oliver and Lord Jauncey, the protected property is the business or goodwill, not the mark, get-up or article itself. The lemon-shaped container was part of the get-up of the lemon juice. A shape or configuration may become an indication of source and receive protection against deceptive use, including where it also serves a functional or descriptive purpose. The injunction did not prohibit all sales of lemon juice in plastic lemons. It required sufficient differentiation to avoid deception.
4. Per Lord Oliver and Lord Jauncey, elements genuinely in common use in a trade cannot ordinarily be monopolised. Here, the natural-sized plastic lemon was not in common use in the United Kingdom trade. Treating an element as merely available for others to use would beg the question whether it had acquired a secondary significance identifying the claimant's goods. Even descriptive words or allusive get-up may acquire such a secondary meaning, although proof may be difficult.
5. Per Lord Oliver and Lord Jauncey, deception is assessed against the relevant market, manner of sale and actual habits of purchasers. There is no universal assumption of a literate and careful customer. Side-by-side comparison was artificial because supermarkets ordinarily displayed only one relevant brand, shoppers relied on recollection, and the lemon shape rather than the detachable label was the crucial point of reference. The public must be taken as found, including the incautious and unwary.
6. The unchallenged findings established that many shoppers seeking Jif would buy any of the proposed containers believing them to contain Jif juice, with diversion likely to run into millions of units. The ReaLemon labels did not sufficiently distinguish the products. The respondents had therefore proved goodwill, likely misrepresentation and likely damage, and the permanent injunctions were properly granted.

1. House of Lords: dismissed the appellants' appeal unanimously and left the permanent injunctions in force: [1990] 1 WLR 491.
2. Court of Appeal: dismissed the appeal on passing off and affirmed the injunctions, but reversed Walton J's finding of fraudulent intention: [1988] F.S.R. 601.
3. High Court: Walton J, after trying two quia timet actions, held that each proposed get-up would constitute passing off and granted permanent injunctions. He also found fraudulent intention, although that finding was unnecessary to the result: [1987] F.S.R. 303.