Passing Off: Numatic Internationa v Qualitex UK
Numatic had sold the Henry vacuum cleaner in the UK since the early 1980s. There were a number of distinctive features about the cleaner: a black “bowler hat” top; red lower half; smiling face, including suction hose nose; and the name Henry.
When Henry’s design protection ran out in 2008, Qualitex sought to produce a replica vacuum cleaner of the same overall shape, which also employed a black “bowler hat”, but with a blue base and without the smiley face or nose. The product was unbranded, but was to be supplied with Qualitex’s brand QUICKCLEAN or with the consumer’s own branding (for commercial customers).
Numatic sued Qualitex for passing off on the basis that Qualitex’s replica product would deceive consumers into believing that it was in some way connected to Numatic.
The evidence showed that Numatic’s marketing had personalised the Henry product to more than just a shape in the minds of the public. There was protectable goodwill in the character.
The key question was, therefore, whether the sale of the replica products was capable of making a damaging misrepresentation to the public.
As no sales had actually been made, the analysis proceeded on the basis of evidence as to how the replica products were likely to be sold in showrooms and via the internet.
In support of their case for misrepresentation, Numatic commissioned a survey. 83 respondents out of 535 thought that the replica product was a Henry; another 88 thought it looked like a Henry.
Although presumably the other 364 respondents were not confused in any way, the combination of survey evidence and Numatic’s witnesses persuaded the court that consumers would be confused by Qualitex’s replica product. This was despite evidence from the witnesses that consumers would exercise care in purchasing a vacuum cleaner (as an expensive and long-lasting product).
Even if Qualitex was going to brand the product QUICKCLEAN, they may still have been liable for passing off. Most consumers did not know that Henry originated from Numatic, so branding may not have reduced origin confusion and the QUICKCLEAN brand was not distinctive or well known, so as to negate against any confusion.
Most readers in the UK will be well aware of the Henry product due to the extensive marketing undertaken by Numatic and would probably agree that the anthropomorphism employed has created considerable goodwill in the Henry brand.
However, the decision will also be seen as a generous one from a passing off perspective, since it is questionable whether the initial confusion generated by the replica product would actually have lead consumers to complete a purchase of the replica product, whilst still labouring under the misapprehension that they were purchasing a Henry, or a product associated with Numatic.