GFS Flex Ltd v Brymec Ltd

On an application for an interim injunction in a passing-off claim, the court applied the structured approach in American Cyanamid v Ethicon [1975] AC 396. The claimant showed a serious issue to be tried, although passing off based on get-up alone is difficult and requires evidence that the feature operates as a badge of origin, rather than merely being recognised or associated with the claimant. Damages would not adequately protect either party. The decisive balance of uncompensatable disadvantage favoured refusing relief. Product labelling and website notices identifying the defendant’s products as unconnected with the claimant materially reduced the risk of deception. The application was dismissed, with the action to be transferred to the Intellectual Property Enterprise Court.

GFS Flex Ltd brought a passing-off claim against Brymec Ltd concerning CSST gas fittings incorporating similar yellow plastic clips. GFS alleged that the clip had become distinctive of its products and that Brymec’s use of a similar clip was likely to cause members of the trade to believe that the products or businesses were commercially connected.

GFS sought an interim injunction preventing Brymec from selling its fittings with the yellow clip pending trial. The parties accepted that the action should ultimately be transferred to the Intellectual Property Enterprise Court. The central issues were whether there was a serious issue to be tried, whether damages would be adequate for either party, and where the balance of convenience lay during the interim period.

1. Serious issue to be tried. The ingredients of passing off are goodwill, misrepresentation and consequent damage, commonly described as the classical trinity. The evidence that customers believed Brymec’s products were supplied by GFS because of the yellow clip was capable of establishing deception going beyond mere wonder. The threshold was low, and the claim was not frivolous or vexatious.
2. Passing off based on get-up alone is legally possible but rare. Recognition or association of a feature with a product is not enough. The claimant must establish that the feature can operate as an indicium or badge of origin on which purchasers would rely. The evidence might ultimately fail to satisfy that requirement, but the issue required trial.
3. Adequacy of damages. Lost sales were potentially quantifiable, although assessment would be difficult. Damage to reputation and erosion of goodwill would be more difficult to quantify. Damages therefore had not been shown to be an adequate remedy for GFS. Conversely, damages under the cross-undertaking would not adequately compensate Brymec for the practical and commercial disadvantages of changing the clip pending trial.
4. Balance of convenience. The court had to assess which course was likely to cause the least irremediable prejudice. The merits were not considered except where one case was overwhelmingly stronger on undisputed facts. Brymec’s proposed product labelling and website notices stating that its products were not manufactured by, and had no connection with, GFS were likely significantly to reduce the risk of deception. The likely harm to GFS was limited, whereas an injunction could materially disrupt Brymec’s product launch.
5. The application for an interim injunction was dismissed. The action was transferred to the Intellectual Property Enterprise Court, with further directions to be considered.

First-instance decision on an application for an interlocutory injunction pending trial. No earlier appellate decision is stated in the judgment.