Fenty & Ors v Arcadia Group Brands Ltd (t/a Topshop) & Anor

The sale of a garment bearing a celebrity’s image is not, without more, passing off. The claimant must establish goodwill, a misrepresentation that purchasers are likely to believe the goods are authorised or endorsed, and damage. The question is fact-sensitive. The court must consider the image, garment, retailer, relevant market and customers’ perceptions together. Recognition of the celebrity, or a general connection with the celebrity, is insufficient. The misrepresentation must concern trade origin or authorisation and must play a part in the purchasing decision. False endorsement and merchandising cases engage the same passing-off principles.

Rihanna, through companies associated with her merchandising and endorsement activities, claimed that Topshop’s sale of a fashion t-shirt bearing her image without her permission amounted to passing off. The image was taken by an independent photographer, who had licensed its use to Topshop.

The claimants alleged that a substantial number of purchasers would believe that the garment was authorised or endorsed by Rihanna, having regard to the image, the garment, Topshop’s reputation and its public associations with Rihanna. Topshop contended that customers bought the t-shirt because they liked the garment or image and did not expect image garments to be authorised. The central issue was whether the sale involved a deceptive representation of authorisation causing damage to Rihanna’s goodwill.

1. Claim succeeded. Topshop’s sale of the t-shirt without Rihanna’s approval was passing off.

2. The relevant passing-off elements were goodwill, misrepresentation and damage. Rihanna had substantial goodwill not only as a musician but also as a style icon in the fashion sphere. The goodwill was capable of supporting a false-endorsement or merchandising claim.

3. The legal principles applied to false endorsement and merchandising were the same. The claimant had to show that purchasers understood the goods to be authorised or official merchandise, that the representation was false, and that it was operative in the purchasing decision. It was not enough that purchasers recognised the celebrity or believed that some connection existed.

4. The issue was fact-sensitive. The court considered the relevant market, the image, the garment, the retailer and the customers’ perceptions. Fashion garments were not inherently less likely to be authorised than traditional merchandise. Nor did the absence of Rihanna’s name, logo or express labelling determine the issue.

5. The particular image looked like publicity material associated with a recent musical release. Topshop’s public efforts to associate itself with Rihanna and other fashionable celebrities increased the likelihood that purchasers would regard the garment as authorised. Although the labelling pointed against authorisation, it did not outweigh the overall impression. A substantial portion of Rihanna’s fans would be induced to buy because they believed the garment was authorised.

6. The resulting deception damaged Rihanna’s goodwill by diverting merchandising sales and causing loss of control over her reputation in fashion. The court therefore found for the claimants.