Knight v Beyond Properties Pty Ltd & Ors

For passing off, goodwill must be more than trivial at the relevant date. A descriptive title may nevertheless generate goodwill where it is not ordinary language for the goods or activity and is adopted as a distinctive title. Residual goodwill depends on factors including the original reputation, continuing promotion, the nature of the goods and the distinctiveness of the mark.

Initial confusion concerning a television programme may be actionable if it causes damage to goodwill. The relevant time for assessing confusion depends on the damage alleged. However, a claimant must prove actual damage or a real likelihood of damage. A claimant cannot rely on the loss of exclusive use of a name without evidence that the loss has caused, or is likely to cause, real commercial harm.

Andrew Knight claimed passing off against companies producing and broadcasting television programmes entitled Mythbusters. He had published three children’s books in the United Kingdom under that name between 1991 and 1996 and relied on associated promotion, media appearances and a proposed television format.

The defendants used Mythbusters for television programmes first broadcast in the United Kingdom in 2003. The issues included whether the title was capable of generating goodwill, whether Mr Knight had goodwill in the United Kingdom in November 2003, whether the defendants’ use constituted misrepresentation, and whether it caused damage.

1. The claim was dismissed. The claimant failed to establish goodwill in the United Kingdom in November 2003 and, alternatively, failed to establish actual damage or a real likelihood of damage.
2. Passing off requires goodwill, misrepresentation and damage, as stated in Reckitt & Colman v Borden [1990] 1 WLR 491. A reputation must be more than trivial. The extent of goodwill is a matter of fact and degree, and residual goodwill depends on the original reputation, subsequent activity, the goods and the nature of the mark.
3. Although Mythbusters described the subject matter of the books and programmes, it was not ordinary speech for describing a book, person or activity. It was used as a distinctive series title and was therefore capable of generating goodwill. The court distinguished the circumstances considered in Hormel Foods Corp v Antilles Landscape Investments NV [2005] RPC 28, McCain International Ltd v Country Fair Foods Ltd [1981] RPC 69 and County Sound Plc v Ocean Sound Ltd [1991] FSR 367, and applied the approach in Phones 4u Ltd v Phone 4u.co.uk Internet Ltd [2006] RPC 583.
4. By the end of 1993 the claimant had a very small but protectable reputation. It had diminished significantly by 1996, and was no more than trivial, if it existed at all, in November 2003. The claimant’s books, limited publicity, television appearances and isolated later references did not establish continuing goodwill.
5. There could be initial confusion when a person familiar with the books encountered the television title. In the television context, the relevant time for assessing confusion must be defined by reference to the damage alleged. Initial confusion could therefore be actionable if it caused damage. The court’s observations, drawing on Schweppes Ltd v Gibbens (1905) 22 RPC 601, Julius Samaan Ltd v Tetrosyl Ltd [2006] EWHC 529 (Ch), Neutrogena Corporation v Golden Ltd [1996] RPC 473 and Newsweek v BBC [1979] RPC 441, were directed to the different contexts of goods, cinema films and television programmes.
6. Loss of the opportunity to exploit goodwill in television could in principle constitute damage. On the evidence, however, the claimant had no real prospect of securing a television production under the title, and any viable programme could have used a variation of the title. The damage claim therefore failed.