The National Guild of Removers And Storers Ltd v Luckes & Ors

In passing off, liability for a misrepresentation published through a third-party medium depends on who directly controlled the act creating it, subject to principles of agency. A business may be liable for a misrepresentation on its own website even if it was unaware of the misrepresentation, because knowledge is not a necessary ingredient of the primary tort. A possible plea of innocent passing off may affect damages, but must be pleaded and argued. Personal liability as a joint tortfeasor requires active cooperation in bringing about the tortious act, an intention that the cooperation should assist that act, and a contribution exceeding the de minimis threshold. A person cannot actively cooperate in an act of which he or she was unaware.

The claimant, a trade body, appealed against a District Judge’s decision concerning passing off arising from former members’ continued use of references to membership on two websites. The District Judge found the defendants liable for the reference on the defendants’ own website, but not for the reference reinstated by the operator of a third-party directory. She awarded damages on the user principle and costs under the IPEC Small Claims Track rules. The defendants cross-appealed against the finding that the individual directors were jointly liable with the company.

The appeal concerned direct liability for material published through a third-party website, the relevance of trade mark authorities, the assessment of damages and costs, and the liability of company officers as joint tortfeasors.

1. Appeal dismissed. The claimant failed to establish that the individual defendants knew of the reference to NGRS on the third-party directory before the complaint. The addition of the company’s suffix to one listing did not prove knowledge of the continuing membership reference.
2. An act of passing off is carried out by the person who performs the act or acts creating the misrepresentation. At least in this case, that meant the party with direct control over the relevant act. The third-party website operator had directly controlled the unintentional reinstatement. The defendants’ liability therefore depended on agency. No agency case had been pleaded or argued, and there was no evidence of actual authority. The claimant’s reliance by analogy on trade mark decisions was rejected because passing off is governed by English tort law, including agency and joint tortfeasance.
3. The user principle was common ground below and the challenge to it was rejected. The same conclusion would in any event follow from NGRS v Central Moves Limited.
4. Cross-appeal allowed in part. The company was liable for the misrepresentation on its own website because the misrepresentation resulted from an act under its direct control. Neither knowledge of the act nor knowledge that it had produced a misrepresentation was a necessary ingredient of primary liability. Innocent passing off might have affected damages, but it had not been pleaded or argued.
5. Applying Fish & Fish Ltd v Sea Shepherd UK, joint tortfeasance required active cooperation in bringing about the primary tortfeasor’s act, an intention that the cooperation should assist that act, and a contribution exceeding de minimis. The individual defendants could not have actively cooperated in the website misrepresentation because they did not know of it. They were therefore not jointly liable with the company.

1. High Court (Intellectual Property Enterprise Court): appeal dismissed. Cross-appeal allowed to the extent that the individual defendants were not jointly liable with the company for passing off arising from the company website.
2. District Judge Hart: by judgment dated 7 March 2016 and order dated 10 March 2016, the claimant succeeded in part. The company and its directors were held liable for passing off concerning the company website, but the defendants were not liable concerning the third-party directory. Damages of £2,000 and costs were awarded.