No measure of success in passing off cup case

The get-up - exterior

There are several means of measuring cooking ingredients, ranging from old school scales to measuring cups.  Since the 1930s, one of the most recognisable brands for measuring cups (at least in England) has been Tala.  The company behind the Tala brand (George East Housewares) produces conical shaped metal measuring cups with a round base.

Prior to 2013, George East had enjoyed a near monopoly over this shape and, since the early 1950s, its appearance.

Consequently, George East was far from thrilled to discover a competitor, Probus displaying very similar measuring cups at a Birmingham trade show in 2013.

The similarities went as far as the reproduction of a typographical error on the interior of the measuring cup.
Following an initial complaint, various assurances were given by Probus in an email to George East's lawyers which stated "we will not restock the product that your client objected to".

The following month, Probus took delivery of 2,000 cups which had a near identical interior but different exterior design.  Upon discovery of these and various other related cup designs George East again objected and ultimately issued proceedings for passing off in the Intellectual Property Enterprise Court (IPEC) in London: George East Housewares Ltd v Fackelmann Gmbh & Co KG & Anor [2016] EWHC 2476.

The get-up - interior

In a passing off case, there are three issues which the court needs to determine (the so-called classic Trinity):

1 Does the claimant have goodwill (and if so in what e.g. the brand name, ‘get-up’ or shape)?

2 Was the defendant’s use of that goodwill such that it would misrepresent to purchasers that the defendant’s goods came from (or were associated with) the Claimant?

3 Has the claimant suffered damage as a result of the misrepresentation?

Another classic trinity

In order for a passing off claim to succeed all three must be proven but a claim cannot get off the ground at all unless the claimant can identify their goodwill.

Some features of goodwill such as a brand name or logo are generally easier to establish goodwill in than a shape or appearance of a product (the "get-up").   Because the Tala name was not used by the defendants, this case concerned the get-up of the measuring cups.

Was there goodwill in the get-up?

George East identified the following ‘get-up’ in their measuring cups [12]:

a. The shape of the product: 

i. A conical shape with an overall shiny/metallic finish;
ii. A silver metallic circular base which consists of a wide base with a curled outer edge, raised edges leading upwards to a smaller flat circular platform upon which the cone shaped cup sits; 

b. The brand name 'TALA' displayed at the top of the cone; 
c. The get-up of the exterior of the product which includes: 

i. A broad stripe of primary colour at the bottom of the cone within which appears a metallic/silver circular section with text appearing therein and an outer thin metallic/silver circle.
 ii. A prominent stripe/central band on the cone of the same primary colour as the aforementioned broad stripe against a silver/metallic background with the text 'COOK'S MEASURE' appearing above it in black capital lettering.
iii. The use of the colours red, blue and/or black against a shiny/metallic finish. 

d. The get-up of the interior of the product which includes: 

i. A creamy/white coloured background which curls over the top of the cup onto the exterior;
ii. A series of vertical tables running down the cup with the outline of the tables and/or the text contained therein appearing in black and/or red;
iii. The names of the following foodstuffs: Rolled Oats Fresh Bread Crumbs... with measurements for each running down each table in grams or ounces highlighted in black. 

As the Defendants had not copied the brand name, the get-up was considered by the judge in the absence of a brand name.

The Claimant's get-up had many variations

Is there goodwill?

The Claimant claimed goodwill in many variations of cup (cup 8 is the version pictured above) and there were several allegedly infringing cups.  In her analysis, the judge noted [21]:

1. "The shape and size of the defendants' cup 1 is extremely similar if not identical to the Claimant's cups."
2. "It is clear that the interior of that cup was copied from the Claimant's cups, down to some stray inverted commas"
3. "The external design of the Defendants' Cup 1 is different to the get-up".
4. "There is no brand name on the Defendants' cups"

To help establish goodwill, the Claimant provided extensive evidence of advertising including in popular national newspapers.   The Defendants accepted that the Claimant had a reputation in its cups but denied that the Claimant had acquired goodwill in the get-up.

The Defendants' cups

The key English cases on passing off of shape and/or get-up were considered from Reckitt & Colman v Borden (Jif Lemon) to Schweppes v Gibbens and, more recently, Numatic v Qualtex.  These cases all identified the difficulties associated with claiming passing off in a shape or get-up.

As a result, the judge noted that there "are real difficulties in proving that trade dress or get-up has acquired a secondary meaning as an indication of trade origin, where, as here, it is consistently used alongside a trade mark or name" [34].  The Claimant had not provided sufficient evidence to establish that their customers rely on the appearance of the measuring cup in order to get a Tala product.  As the Arnold J put it in the recent London Taxi case, reliance is the acid test for the purposes of acquisition of goodwill in a shape [287].

The judge accepted that: (a) it is possible for features such as shape and decoration to identify a product even when the name by which it is known is missing, and (b) a confusingly similar name is not essential for a passing off to succeed.  However, she concluded that this was not a case where the public has been educated to recognise the shape of a Tala cup as indicative of the origin of the goods and consequently George East lacked the requisite goodwill to get the claim off the ground.

If that was wrong, she went on to consider confusion... Although there was some evidence of actual confusion - such as a photograph of the wrong product being used to illustrate an article in a national newspaper, the judge did not have sufficient evidence to determine how or why these photographs were used.  The absence of actual confusion was not fatal, in part because relatively small numbers of the relatively low cost items had been sold and the judge accepted that it was credible that evidence of actual confusion would not have come to light.

The judge considered the test set out in Interflora and Neutrogena for the level of confusion required, i.e. In Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501 Lewison LJ referred to Neutrogena [1996] R.P.C. 473 that:

"...There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By 'enough' I mean a substantial number of the plaintiff's customers or potential customers deceived for there to be a real effect on the plaintiff's trade or goodwill."

On appeal in Neutrogena Morritt L.J. had held that the correct test was whether a "substantial number" of members of the relevant public had been deceived.  Lewison LJ concluded that the "important point is that passing off had been established even though most people were not deceived." [30]

Having considered both cases, the judge concluded that the "conspicuous differences" [79], particularly between the exteriors of the cups meant that any confusion whether by members of the trade or consumers would be too low to satisfy the Interflora/Neutrogena test.