Reputation • Reputation means that an association has been established between the mark and the source • It does not mean that the source has a “good” reputation • The quality of the wares is left for the consumer to judge • The law protects the association between the mark and the wares
Reputation • It must be established that consumers have, by reason of the appearance of the goods of the plaintiff, come to regard them as having some one trade source or provenance, whether manufacturing or marketing, • Roche Products Ltd. v. Berk Pharmaceuticals Ltd.,  R.P.C. 473 (C.A. )
Reputation • . . .it matters not that [the consumers] have no idea at all of the identity of that trade source or provenance. • Roche Products Ltd. v. Berk Pharmaceuticals Ltd.,  R.P.C. 473 (C.A.) • This is sound in principle – so long as there is in fact one source and consumers associate the mark with a source, the “virtuous circle” will function
Establishing Reputation • It may be helpful to think of there being two elements: to establish a reputation the mark must be • Distinctive • That is, capable of identifying a source • Note that it is possible for a mark which is not inherently distinctive to acquire distinctiveness through long association • Eg Molson Canadian • Associated with a single source
Survey Evidence • Reputation is very often established through the use of consumer survey evidence • See eg Petals v Winners • But this is not always essential • See Ray Plastics
Survey Evidence • The position of Brushcraft is that there was simply no evidence to support the trial judge's conclusion that the Snow Trooper had established any reputation or that its get-up had acquired any secondary meaning. In particular, there was no evidence from consumers or marketing experts and no surveys. • See Ray Plastics
Inherent Distinctiveness • . . .the rule is that the more distinctive a product, the more easily one can establish reputation. • Ray Plastics • The reference to “product” is because this is a case of “get up” where the shape of the product itself is distinctive • The same applies to marks
Intentional Copying • Copying of a distinctive mark can give rise to an inference of reputation: Ray Plastics • "If he imitates the other's trademark or tradename knowingly and acts in other ways to convey the impression that his business is associated with the other, the inference may reasonably be drawn that there are prospective customers to be misled." • The inference of "prospective customers to be misled" means that the product had a reputation, that the get-up had secondary meaning.
Intentional Copying • Notice that intent to confuse is not an element • The only element is likelihood of confusion on the part of the public • Intent to confuse by the defendant may support the inference that the public would in fact be likely to confused
Reputation is Essential • He stated that only one-half of the retailers recalled the brand and amongst consumers, it had no more awareness than a fictitious brand. . . . neither the consumer nor the retailer could consistently identify the plaintiff. • A plaintiff need not be famous in order to enjoy the protection of its goodwill. However, there must exist some reputation with at least a segment of the public. Here, the volume of sales was also so small as to fail to establish any reputation or goodwill. • Petals
Reputation inferred from Similarity • In this case the defendant’s mark was confusingly similar to the plaintiff’s mark • Why can we not draw the inference that the product had a reputation, as in Ray Plastics? • This case illustrates that reputation and confusion are distinct elements
Reputation and Confusion • Ray Plastics shows that reputation and confusion are related • Petals shows that they are distinct
Descriptive Marks • Once it is established that these words are both the name of a product and descriptive of that product, the difficulty of establishing a passing off merely by the use of those words in relation to the product is extreme. • Canadian Shredded Wheat v Kellogg • Why?
Generic Marks • If the mark is the name of product • It is not registrable under the Trade-marks Act • S.12(1)(c) • It essentially impossible to establish reputation in a passing off action
Descriptive Marks • Under the Trade-marks Act a mark which is descriptive can only be registered if it has acquired “distinctiveness” • In order to establish reputation in a passing off action it is necessary to establish “secondary meaning” • “Secondary meaning” is the meaning of the descriptive term as a mark, in addition to its meaning as a description
Reddaway v Banham • Is the “camel hair belting” case an example of • A generic mark? • Or a descriptive mark?
Oxford Pendaflex • Issues • 1 Did the trial judge err in finding that the trays originated from several sources • This finding implies that no single source developed a reputation • 2 Is it necessary to show that consumers associated the mark a particular known source • Or is it sufficient if consumers associate the mark with a single source, though they do not know the source
Oxford Pendaflex • Second issue • It is to be noted that in the first part of the observation of Russell L.J. there seems to be a requirement that the purchasing public be left with the impression that the goods of the defendant are the goods of the plaintiff. The next part of the paragraph makes it clear, however, that all that need be left in the mind of the purchaser is the idea that all of the pills (in that case, by reason of their shape, size and mode of marking), came from "one trade source". There is in that standard no need for the plaintiff to take the next and difficult step of showing that the customer must have known or believed that the only source of the product was the plaintiff. . . .
Oxford Pendaflex • First issue • The mark must in fact be distinctive of a single source • In the end the trial Judge concluded, and rightly if I may say so, that all these stacking trays had a common origin in the aforementioned American manufacturer, that nothing had been adapted or created by any of the suppliers, including the appellant, which made any of these trays distinctive, and consequently no secondary meaning had been acquired by the product of the appellant in the market.
Extended Passing Off • ErvenWarnick carves out an exception to the rule that the mark must be distinctive of a single source • Is the exception justified?
Limits of Passing Off • “A defendant, however, does no wrong by entering a market created by another and there competing with its creator.” • Cadbury Schweppes
Limits of Passing Off • The line may be difficult to draw; but, unless it is drawn, competition will be stifled. The test applied by Powell J in the instant case was to inquire whether the consuming public was confused or misled by the get-up, the formula or the advertising of the respondent's product into thinking that it was the appellants' product. And he held on the facts that the public was not deceived. • Cadbury Schweppes