GMG Radio Holdings Ltd & Ors v Tokyo Project Ltd & Anor

In an application for an interim injunction in a passing-off claim, the claimant must show a serious issue to be tried and then establish that the balance of justice favours relief. Similarity or association between a defendant’s get-up and the claimant’s branding does not itself establish passing off; the relevant question is whether the public is likely to believe that the defendant’s goods or services are those of, or connected with, the claimant. Where the claimant’s get-up is difficult to define, is not unique, and is accompanied by the defendant’s own prominent brand name, the risk of deception may be low. The court must compare the likely uncompensable harm to each side, including the commercial consequences of granting or refusing relief pending trial.

The claimants operated the Hed Kandi music brand, including compilation albums, club nights and radio programmes. They alleged that the defendants, a former employee and his new company, were using artwork in connection with a competing music venture which imitated the general style of Hed Kandi’s album artwork and amounted to passing off.

The application sought to restrain use of the artwork on compact discs, promotional materials, event advertising and a website pending trial. The court considered whether there was a serious issue to be tried and, if so, where the balance of justice lay.

1. Serious issue to be tried. The court applied the three elements of passing off identified in Reckitt & Colman Products Ltd v Borden Inc (Jif) [1990] RPC 341: goodwill or reputation attached to distinctive get-up, a misrepresentation likely to lead the public to believe that the defendant’s goods or services were those of, or connected with, the claimant, and damage caused or likely to be caused by that erroneous belief.
2. The claimants faced substantial difficulties. Their alleged get-up was a general artistic style rather than a clearly defined combination of features. Similar pop-art imagery appeared in other music-related products and advertising. The defendants’ compact discs prominently displayed the Tokyo Project name. The survey evidence suggested recognition or association with Hed Kandi, but association was not the same as confusion or passing off.
3. The defendants’ choice of artwork and statements concerning the relationship between the new venture and Hed Kandi were relevant to the question of likely deception. However, they did not justify concluding at the interim stage that the artwork itself was distinctive of the claimants or that deception was intended. The claimants had shown a serious issue in relation to the compact discs, and only an arguable case concerning the promotional materials and website.
4. Balance of justice. Damages would be difficult to quantify for the claimants if passing off were ultimately established. Conversely, damages would be inadequate for the defendants if an injunction prevented the imminent production and Christmas launch of the compact disc and potentially caused the new business to fail. The likely harm to the claimants from refusing relief was relatively limited because the risk of significant diversion through deception was low.
5. The balance therefore favoured refusing the injunction for the compact discs. It also favoured refusal in respect of the advertising materials and website, where substantial distribution had already occurred without evidence of actual confusion and an injunction would require disruptive redesign. The application was dismissed.

First-instance interim application in the High Court. The judgment records no prior or subsequent appellate decision.