Gama Healthcare Ltd v PAL International Ltd

A passing-off claimant relying on packaging get-up must prove goodwill in the pleaded combination of features, not merely a reputation in the product name or common colour coding. The court must assess the whole get-up, including prominent trade names, against the nature of the market, the manner of sale and the habits of the relevant purchasers. Specialist and careful purchasing practices may materially reduce the likelihood of deception. A trader who knowingly adopts a similar design may have decided to live dangerously without intending to deceive. Passing off requires deception of a substantial number of the relevant public, sufficient to affect goodwill. Packaging is an instrument of deception only where it is itself adapted and intended to facilitate passing off.

The claimant manufactured and supplied clinical wet wipes under the name Clinell. The defendant sold competing wipes under the name Medipal. The claimant alleged that the defendant’s Phase 3 and Phase 4 flow-wrap packaging, using coloured blocks and curved divisions, was deceptively similar to the claimant’s green-and-white and yellow-and-white packaging.

The claim was limited to passing off based on the packaging get-up. The claimant did not claim a monopoly in colours alone or in colour-coded packaging generally. The issues were whether the claimant had goodwill in the pleaded get-up, whether the defendant’s packaging constituted a misrepresentation to a substantial part of the relevant public, and whether it was an instrument of deception.

1. Claim dismissed. The claimant failed to establish passing off.
2. Passing off required goodwill or reputation attached to the goods through distinctive get-up, a misrepresentation leading or likely to lead the public to believe that the defendant’s goods were those of the claimant, and damage. Damage was conceded if goodwill and misrepresentation were proved: [27].
3. The relevant date for goodwill was when the defendant commenced the complained-of activity, namely September 2013: [28]. The relevant consumers were principally NHS procurement departments and healthcare professionals. Their expertise, approval procedures, product trials, coding systems and ordering practices were relevant to the assessment of deception: [51], [64]-[74].
4. The claimant had goodwill in the Clinell name, but had not proved goodwill in the pleaded packaging get-up without that name. Green packaging for disinfectant wipes, yellow packaging for detergent wipes and curved lines were common or conventional features in the trade. The evidence did not show that consumers relied on the overall design as an indication of origin: [39]-[49].
5. Although the defendant deliberately referenced the claimant’s packaging and had chosen to live dangerously, the evidence did not establish an intention to deceive. The distinct Medipal name and other conspicuous differences were significant: [52]-[54].
6. Looking at the whole packaging and the circumstances of purchase, the similarities created only a small risk of deception in atypical situations. That was insufficient to deceive a substantial number of customers or potential customers or to cause a real effect on goodwill. The packaging was not an instrument of deception: [55]-[77].

First-instance decision. No prior appellate decision was stated in the judgment.