tag:blogger.com,1999:blog-5574479.post6291204982743205436..comments2024-03-19T08:36:55.274+00:00Comments on The IPKat: Kat konfusion regarding passing off: likelihood of confusion and the Starbucks (HK) caseVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-5574479.post-18936322986413590122018-10-22T02:48:24.323+01:002018-10-22T02:48:24.323+01:00The Starbucks (HK) decision is gravely flawed, and...The Starbucks (HK) decision is gravely flawed, and the above noted point is the least of its problems. http://www.inta.org/TMR/Pages/vol108_no4_c1_mcnichol.aspx<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-52397958631535095022017-03-19T09:49:45.337+00:002017-03-19T09:49:45.337+00:00Re Comment from Warwick Rothnie,
Indeed! The Supr...Re Comment from Warwick Rothnie,<br /><br />Indeed! The Supreme Court dealt with this case in paragraph 42 of the judgment. I leave it to Kat readers to decide how persuasive they find the discussion.<br />"42. Support for PCCM’s case may however be found in the decision of the Federal Court of Australia in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992 (106 ALR 465, given by Lockhart J, with whom Gummow and French JJ agreed (and gave judgments of their own). After a very full review of the common law authorities (including those I have discussed above) on pp 473-501, Lockhart J said at p 504 that it was “no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on”, relying on “[m]odern mass advertising … [which] reaches people in many countries of the world”, “[t]he international mobility of the world population” and the fact that “[t]his is an age of enormous commercial enterprises”. He also said at p 505 that, in his view, “the ‘hard line’ cases in England conflict with the needs of contemporary business and international commerce”. He concluded on the next page that “it is not necessary …that a plaintiff, in order to maintain a passing off action, must have a place of business or a business presence in Australia; nor is it necessary that his goods are sold here”, saying that it would be “sufficient if his goods have a reputation in this country among persons here, whether residents or otherwise”. Two points should be noted about this decision. First, the passing off claim nonetheless failed because the plaintiff was held to have an insufficient reputation in Australia. Secondly, the High Court of Australia has not considered this issue".Neil Wilkofhttps://www.blogger.com/profile/04200865773480720037noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-14885305962450904042017-03-18T07:40:06.237+00:002017-03-18T07:40:06.237+00:00I have tried to research on this point, whether &q...I have tried to research on this point, whether "likelihood of confusion" is an element to be proven in the claim of 'passing off'. UK cases seem to suggest that having found 'likelihood of confusion' may help establish "misrepresentation" but by no means an equivalent.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-17599420482291193662017-03-18T01:33:18.782+00:002017-03-18T01:33:18.782+00:00Being the Ipkat, you are of,course,talking about t...Being the Ipkat, you are of,course,talking about the law of passing off <i>in the UK</i>. It is precisely the conundrum you identify which led the Full Federal Court of Australia to recognise that reputation is enough in <a href="http://www.austlii.edu.au/au/cases/cth/FCA/1992/159.html" rel="nofollow">ConAgra v McCain</a>, no doubt under the pressure of the statutory remedy against <a href="http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCAFC/2008/181.html?stem=0&synonyms=0&query=ConAgra" rel="nofollow">misleading or deceptive conduct in trade or commerce</a>.Anonymoushttps://www.blogger.com/profile/02954195004638238150noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-30216136992398524402017-03-17T16:23:12.608+00:002017-03-17T16:23:12.608+00:00Confusion ("deception" is probably a mor...Confusion ("deception" is probably a more accurate word in the context of passing off) or the likelihood of it counts for nothing if there is nothing to protect; i.e. if there is no goodwill. A "likelihood of confusion" is not itself a thing or a right to be protected. It is part of a test; a test which in EU trade mark terms requires an underlying trade mark registration for the same or a similar mark and for the same or similar goods (unless of course the opponent/claimant is relying on a reputation). No trade mark registration (an essential part of the test) = no infringement. Similarly, no goodwill (an essential part of the test) = no passing off. It's akin to the holder of a US trade mark registration that has a reputation in the UK (but is not registered in the UK) trying to sue for trade mark infringement. No trade mark registration, no infringement. No goodwill, no passing off..Ben Mooneapillaynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-64308204332789469492017-03-17T10:34:11.175+00:002017-03-17T10:34:11.175+00:00Similar thoughts occurred to me when reading the r...Similar thoughts occurred to me when reading the recent judgment in Bhayani v Taylor Bracewell [2016] EWHC 3360 (IPEC), HHJ Hacon: http://www.bailii.org/ew/cases/EWHC/IPEC/2016/3360.htmlAnonymousnoreply@blogger.com