George East Housewares Ltd v Fackelmann Gmbh & Co KG & Anor (Rev 1)

Passing off requires goodwill or reputation associated with the relevant get-up, a misrepresentation, and consequential damage. Product shape or decoration may indicate trade origin without a similar brand name, but such cases are rare and require evidence that the relevant public relies on those features as a point of reference for goods from a particular source. Length and extent of use alone are insufficient. The court must assess the whole get-up, including conspicuous differences and any identifying trade names. A substantial number of relevant consumers must be misled; isolated or ambiguous instances of confusion do not suffice. Intention to copy or a decision to live dangerously may be relevant, but neither establishes passing off without the required misrepresentation.

George East Housewares Ltd brought two consolidated passing-off claims against Fackelmann GmbH & Co KG and Probus Creative Housewares Ltd concerning conical kitchen measuring cups. The claimant relied on goodwill in the shape and get-up of its Tala Cook’s Dry Measure, excluding the Tala brand name. The defendants denied goodwill, misrepresentation and damage.

The court considered whether the claimant owned goodwill in the pleaded get-up by January 2013, whether the defendants’ cup designs constituted a misrepresentation, and whether damage had resulted. The trial was confined to liability, with the issue of alleged joint tortfeasance adjourned.

1. The claim was dismissed. The claimant failed to establish goodwill in the pleaded get-up, either as a whole or in identifiable features excluding the Tala name.

2. The court applied the classical trinity stated in Reckitt & Colman Products Ltd v Borden Inc (No.3) [1990] RPC 341: goodwill or reputation attached to the relevant get-up, a misrepresentation leading or likely to lead the public to believe that the defendant’s goods were those of, or connected with, the claimant, and consequential damage.

3. Goodwill in product shape or get-up without a brand name is possible, but unusual. The claimant must show that the relevant public recognises the feature as indicating a particular trade source and relies upon it for that purpose. The evidence did not show that consumers treated the Tala cup’s shape, stripes, colours, metallic finish or interior design as such indicators. Length of use, sales, publicity and general recognition were insufficient without evidence of source reliance.

4. The court considered the whole get-up and the parties’ respective brand presentations. Although the defendants’ cups shared some features with the claimant’s cups, conspicuous differences in colour, wording, exterior design and overall impression meant that the products were not likely to be taken as Tala products or as commercially connected with the claimant.

5. Passing off requires deception of a substantial number of the relevant public. The court applied the approach in Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501 and Neutrogena [1996] RPC 473. The limited and ambiguous evidence of actual confusion did not satisfy that test.

6. The defendants’ intention to make a generic version and their decision to live dangerously were relevant circumstances, but intention to deceive was not an element of passing off. Copying the interior and adopting a similar shape did not itself establish the necessary misrepresentation.

7. Even if goodwill had been established, the court would have found that the defendants’ respective designs were sufficiently distinguished from the claimant’s get-up and that no actionable misrepresentation or damage had been proved.