Case law: Business could not claim 'passing off' on basis of rival product's colour when product names were distinctive
Businesses faced with rivals selling apparently similar products should consider the look and feel of the rival's whole product, not just individual elements such as colours, when assessing whether there is sufficient similarity to bring a passing off action against the rival.
This update was published in Legal Alert - June 2016
Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.
A business making medical wipes claimed a rival's 'get-up' – the look and feel of their product - was too similar to that of its own wipes, and was likely to lead customers in the relevant market to believe the rival's wipes were, or were connected with, its own business. It brought a passing off claim in the courts.
Passing off laws aim to stop third parties selling goods or services which are the same as, or similar to, another business's goods or services without their permission. To win a passing off claim a business has to show that:
- Its goods have a good reputation (ie there is 'goodwill' attached to them)
- The goods are associated with its business
- There has been a misrepresentation by a third party which leads, or is likely to lead, the public to confuse the third party's goods and services with those of the business
- It has suffered damage because of the passing off
The claim was mostly based on the rival's use of similar colours on the front of its packs – both used green and yellow on the packaging for different type of wipe, and laid the colours out in roughly the same configuration.
The High Court ruled that there had been no passing-off because the claimant had not shown there was goodwill in the colours on the different types of wipes.
It also commented that it would never be easy to claim passing off on the basis of a rival product's identical or similar get-up if the products concerned have distinctive names. This is because the court has to look at the entirety of each product, not just, for example, the colours used; and ask whether, in the ordinary course of things, a person in the relevant customer group (in this case, hospital staff) with a reasonable apprehension and with proper eyesight would be deceived. If the product names are different and distinctive, this is unlikely.
In this case the business bringing the claim had focused on the similarities between the two products (the colours used on them) and ignored the differences, such as the distinctive names displayed on each.
- Businesses faced with rivals selling apparently similar products should consider the look and feel of the rival's whole product, not just individual elements such as the colours used on each product, when assessing whether there is sufficient similarity to justify a passing off action
Case ref: Gama Healthcare Limited v Pal International Limited  EWHC 75 (IPEC)
Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.
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