Woolley & Anor v Ultimate Products Ltd & Anor

A passing off claim requires goodwill or reputation, a misrepresentation, and damage. The assessment is fact-sensitive and concerns the overall impression made on the relevant public. A judge must reach an independent view on whether the defendant’s conduct is calculated to deceive; witness evidence is relevant but not determinative. Similar names, presentation, pricing, marketing and retail outlets may establish misrepresentation even without evidence of deliberate deception or widespread actual confusion. Goodwill in one product category does not automatically extend to related goods. Where misrepresentation is established, likely loss of sales may suffice, but purely theoretical royalty loss or brand dilution will not necessarily constitute recoverable damage.

The claimants, Nigel Woolley and Timesource Limited, owned and operated the HENLEY watch business. The defendants, Ultimate Products Limited and Henley’s Clothing Limited, marketed watches and jewellery under the similar name HENLEYS. Timesource alleged passing off in relation to watches, jewellery and bags, alongside a stayed Community trade mark infringement claim.

The parties had previously operated under licence arrangements, but the licence was terminated before proceedings were issued. The trial concerned whether the defendants’ use of HENLEYS involved goodwill, misrepresentation and damage for passing off, and whether those elements extended beyond watches.

1. Elements of passing off. The court applied the established three-stage analysis: goodwill or reputation attached to the claimant’s goods, a misrepresentation leading or likely to lead the public to believe that the defendant’s goods came from the claimant or an associated source, and damage caused by that belief.
2. Goodwill. Timesource had substantial goodwill in HENLEY watches, based on substantial sales, repeat orders, the range of outlets and the trade evidence of reputation. The absence of direct survey evidence from consumers was not fatal. Any separate goodwill in jewellery and bags was minimal and essentially derived from the watch business. The earlier trade mark licence was of limited significance and was disregarded when assessing the passing off claim.
3. Misrepresentation. The court assessed the overall circumstances. HENLEY and HENLEYS were virtually identical; the brands were presented similarly on watch dials; the products occupied a similar price and fashion-watch market; and the sales outlets substantially overlapped. Those factors created a belief that HENLEYS watches were, or were associated with, HENLEY watches. Deliberate deception was unnecessary. The evidence did not establish equivalent misrepresentation for jewellery or bags.
4. Damage and disposition. Although actual damage was not proved, likely loss of HENLEY watch sales and difficulties in selling under the HENLEY brand were sufficient. The claimed loss of licence royalties did not flow from the misrepresentation, and brand dilution was unreal on the facts. Passing off was therefore established for watches, while the claim concerning jewellery and bags was dismissed.