Inter Lotto (UK) Ltd. v Camelot Group Plc

The relevant date for goodwill and reputation in a passing-off claim remains the date when the defendant begins the conduct complained of. The filing date of a competing trade-mark application does not replace that date.

The Trade Marks Act 1994 recognises earlier passing-off rights and gives registration retrospective effect, but its express saving of passing off prevents the court implying a general rule that post-application use cannot build goodwill. Pre-publication use is not criminal conduct capable of engaging general illegality principles.

Inter Lotto operated public-house lotteries using the name HOTPICK. Camelot operated the National Lottery and applied on 17 October 2001 to register HOTPICKS as a trade mark. Camelot’s game was first available to the public on 10 July 2002. Inter Lotto later brought proceedings for trade mark infringement and passing off.

Patten J ordered a preliminary issue concerning whether 17 October 2001 was the relevant date for assessing Inter Lotto’s goodwill and reputation. The appeal arose from the Chancery Division decision of Laddie J. The central issue was whether the filing date, the retrospective effect of registration and the provisions of the Trade Marks Act 1994 prevented later use from contributing to a passing-off claim.

1. Disposition. Carnwath LJ delivered the leading judgment. Keene LJ and Pill LJ agreed. The appeal was dismissed.
2. Passing off. The established rule is that liability in passing off is assessed at the date when the defendant begins the conduct complained of. Goodwill and reputation are assessed by reference to that date. The filing date of a trade-mark application has no direct relevance to the passing-off cause of action: Cadbury Schweppes Property Ltd v The Pub Squash Co Ltd [1981] RPC 429 (paras [7], [29]).
3. Interaction with trade-mark legislation. The Trade Marks Act 1994 gives protection to earlier rights under section 5(4), and registration has retrospective effect under section 40(3). Those provisions do not create an implied filing-date bar preventing goodwill acquired after the application but before the defendant’s market conduct from being relied on in passing off. Section 2(2) expressly preserves the law of passing off, notwithstanding apparent overlap or conflict with registered trade-mark rights. Section 48 is a specific and limited qualification concerning acquiescence and does not justify a wider implied qualification (paras [29]-[38], [48]-[56]).
4. Illegality. The broader ex turpi causa analysis was not the basis of Camelot’s appeal. In any event, use before publication of registration was not a criminal offence under section 9(3)(b), and no fraud on the public or comparable reprehensible conduct was alleged. The use could not therefore be disregarded under a general illegality principle (para [33]).
5. Unresolved consequences and European law. The court left wider hypothetical consequences of retrospective registration for another case because they could not be resolved within the preliminary question. A reference to the European Court of Justice was unnecessary: the issue arose from the retrospective effect given by domestic law, which provided greater protection for the registered right than the Directive required (paras [39]-[43]).
6. Orders. Camelot was ordered to pay Inter Lotto’s costs of the appeal, including the costs of the respondent’s notice. Leave to appeal was refused.

• Court of Appeal (Civil Division): On 30 July 2003, dismissed Inter Lotto’s appeal and refused leave to appeal.
• Chancery Division: The appeal was from a decision of Laddie J concerning a preliminary issue ordered by Patten J on 19 March 2003.