Summary
Passing off requires goodwill or reputation, a misrepresentation, and damage. A trade association may sue to protect goodwill in its trading name. Misrepresentation is established where conduct moves a substantial number of relevant persons from wondering whether there is a connection to assuming one. Mere confusion is insufficient, but the court must ask whether the conduct is really likely to damage goodwill or divert trade. A person may be liable for a misleading representation made on its own website. Liability does not automatically follow where an independent third party reproduces earlier wording without the defendant’s knowledge, intention, agency, authorisation or procurement.
Factual background
The claimant, a trade association representing the removals and storage industry, alleged that the defendants had passed off their services as connected with the claimant by using references to the National Guild of Removers and Storers after the first defendant’s membership had ended.
The court considered two advertisements. The first defendant’s own website advised customers to use a removal company that was a member of the claimant. A separate directory entry on the Really Moving website stated that BeeMoved was a member of NGRS. The issues included liability for each advertisement and, in relation to the second advertisement, the personal liability of the individual directors.
Held
- Bee Moved advertisement. The reference in the moving checklist to using a removal company that was a member of the claimant implied that the defendants themselves were members. It was not merely general advice. The representation was damaging to the claimant’s goodwill and was more than mere confusion. Nothing on the webpage dispelled the misleading impression. All three defendants were liable for passing off.
- Really Moving advertisement. The court accepted that the offending wording had reappeared after a website crash from an earlier version and that the defendants did not know of, intend, authorise or procure the directory entry. They were not automatically liable merely because the wording had originally come from them. The claimant’s reliance on the post-termination notification provisions was outside the pleaded case and would have prejudiced the defendants. The alternative argument based on exploiting a customer’s mistaken belief also failed because there was no evidence that a customer had made that belief clear or that the defendants had failed to correct it.
- The claim concerning the Really Moving advertisement therefore failed. The court nevertheless stated that, had the first defendant been liable, the individual directors would also have been jointly liable. They were the company’s controlling mind, made marketing decisions jointly, and their lack of contractual privity with the claimant would not have prevented tortious liability.
- The court followed the closely analogous reasoning in National Guild of Removers and Storers Ltd v Luckes, where unexplained reappearance of old website wording did not establish liability.
The court’s approach to earlier authorities
Available to signed-in members.
Appeal route
- This judgment [2016] EWHC 3192 (IPEC) High Court (Intellectual Property Enterprise Court)
- Appealed to[2018] EWCA Civ 1302Outcomeappeal dismissed
Key cases cited
18 authorities cited.
- Sea Shepherd UK v Fish & Fish Limited [2015] UKSC 10
- Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341
- Marks and Spencer PLC v Interflora Inc & Anor [2012] EWCA Civ 1501
- Woolley & Anor v Ultimate Products Ltd & Anor [2012] EWCA Civ 1038
- Phones4u Ltd & Anor v Phone4u.Co.UK & Ors [2006] EWCA Civ 244
- Reed Executive v Reed Business Information [2004] RPC 40
- Grenade (UK) Ltd v Grenade Energy Ltd & Anor [2016] EWHC 877 (IPEC)
- Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC)
- The National Guild of Removers and Storers Ltd v Milner (t/a Intransit Removals and Storage) & Ors [2014] EWHC 670 (IPEC)
- Manvers Engineering Ltd & Anor v Lubetech Industries Ltd & Ors [2013] EWHC 3393 (IPEC)
- National Guild of Removers and Storers Ltd v Luckes unreported, 7 March 2016
- National Guild of Removers & Storers Ltd v Silveria [2010] EWPCC 015
- BSkyB v Sky Home Services [2007] FSR 14
- Neutrogena Corporation and Anor v Golden Ltd and Anor [1996] RPC 473
- Warnink BV v Townshend [1980] RPC 31
- Ewing v Buttercup Margarine Co Ltd [1917] 2 Ch 1
- Spalding Brothers v AW Gamage Limited [1915] 32 RPC 273
- Society Of Accountants and Auditors v Goodway and London Association Of Accountants Ltd [1907] 1 Ch 489
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Cases citing this case
3 later cases · 2 positive · 1 neutral
Most senior citing decisions:
- Advance Magazine Publishers Inc. & Anor v Cornucopia Entertainment Limited & Anor [2026] EWHC 1488 (IPEC) applied
- Wise Payments Limited v With Wise Limited & Ors [2025] EWHC 1722 (IPEC) applied
- Jadebay Ltd & Ors v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC) considered
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