Passing off based on get-up - a cup of disappointment
09 November 2016
This case provides a very useful overview of the tricky area of passing off based on get-up; an issue which has always sat rather uncomfortably with public perception.
The claimant was the company that manufactures and distributes TALA kitchenware in the UK, George East Housewares Ltd. The first defendant, Fackelmann GmbH, was a German company that manufactures household items and the second defendant, Probus, a related company which imports and distributes the first defendant’s kitchenware products, together with products from other companies. Whilst this article will refer to the defendants, it is important to note that no judgment was provided on the issue of tortfeasorship.
It was alleged that the claimant’s TALA measuring cups enjoyed goodwill, and the defendants had passed off their own measuring cup as the claimant’s product.
In this case, Miss Recorder Amanda Michaels was sitting as deputy judge in the Intellectual Property Enterprise Court (IPEC). Crucially for a case concerning passing off, the deputy judge first considered the definition of get-up in the claimant’s measuring cups and held that it could be classified as follows:
- Shape of the cup;
- The TALA name as used on the cups;
- Interior design of the cup;
- Exterior design of the cup; and
- The brand name (TALA).
Interestingly, the “retro feel” of the cup was not a pleaded feature of the get-up.
The deputy judge carefully considered how the design of the TALA measuring cups had evolved over time, and noted that certain models did not feature the get-up as pleaded (although they did have other significant elements which had been omitted from the definition of 'get-up').
The judgment contains a succinct overview of the law on get-up in the context of passing off, including the seminal “Jif Lemon” case of Reckitt & Colman v Borden, which set out the three limbs of passing off: goodwill/reputation, misrepresentation and damage. In particular, the judgment focussed on the difficulty in establishing misrepresentation where a defendant’s product copies elements of the claimant’s get-up but does not bear a mark similar to the claimant’s brand name and the importance in such cases of demonstrating the get-up alone can identify trade origin.
In this instance it was held that there was no goodwill in the shape of the cup alone, or in the get-up as a whole. As regards the shape, this claim appeared to fail on the basis that the claimant had not demonstrated that the relevant public relied on the shape of the product to identify trade origin. The deputy judge herself noted that proving that a single feature of get-up (here, the shape) was capable of acting as an indicator of origin was an “uphill task”, in light of the case-law in this area. In relation to the get-up as a whole, part of the downfall was the lack of pleaded evidence such as relevant sale figures and impact of the evolving designs and advertising expenditure.
The deputy judge still considered the issues of misrepresentation and damage, similarly finding that neither of these factors was established. Whilst it was held that the products of the claimant and defendants were similar in some respects, and it appeared that the interior design of the claimant’s measuring cups had “without doubt” been copied by the defendant, the differences between the designs of the products of the claimant and defendant, together with a lack of evidence of confusion, resulted in it being unlikely that a purchaser would be misled or believe there to be a link between the two products.
The case is a cautionary reminder to be very careful when particularising claims regarding get-up and to ensure that full evidence is provided in support of a case.
- Reckitt & Colman Products Ltd v Borden Inc (No.3)  RPC 341
- George East Housewares Ltd v Fackelmann GMBH & Co KG and another  EWHC 2476 (IPEC)