IP analysis: The claimant’s application for an interim injunction in respect of a claim in passing off was dismissed. The court was not satisfied on the basis of the applicable American Cyanamid principles that an interim injunction should be granted. In particular, taking into account of: (i) the strength of the claimant’s case in respect of the shape (the ‘get up’) of its vodka bottles, (ii) the alleged evidence of confusion, and (iii) the likely adequacy of damages for the claimant but not the defendants, the court concluded that the balance of convenience tilted towards maintaining the status quo that existed at the time immediately prior to the issuing of the claim, rather that the date of the complaint letter. The judge rejecting the suggestion that this was a case where the defendant had pressed on with its alleged acts of passing off (the launch of its Ne10 vodka range)—in the face of the initial letter of complaint in order to secure an advantage in relation to the applicable status quo. Further to the claimant’s application, there was also a brief and what the judge described as an ‘informal’ application by the second defendant to have the claims against them struck out. The application was dismissed in part save in respect of those allegations that were founded solely in respect of acts said to be preparatory for passing off. Written by Dr Tim Sampson, barrister at Lamb Chambers.

Passing off action Passing off is a common law action that is used to protect unregistered trade mark rights in the UK. The stages of the Flowchart cover establishing a claim for passing off covering: • the three essential elements of goodwill, misrepresentation, and damage • sending a letter of claim, issuing proceedings and applying for an injunction • commencing proceedings in the general Intellectual Property List or the Intellectual Property Enterprise Court sub-list in the Business and Property Division of the High Court • case management including allocation, the case management conference and directions • disclosure and evidence including inspection, additional disclosure and survey evidence • trial preparation and post-trial activities such as election between damages or an account of profits • applications to appeal Stage 1—preparing to bring a claim and pre-action matters Claim preparation and pre-action matters—Practice Notes • Passing off—goodwill, misrepresentation and damage • Trade mark and passing off disputes—a practical guide • How to run an IP dispute • Privilege and intellectual property • Types

What is passing off? Passing off is a common law tort which protects rights that are not capable of registration or are difficult to register as trade marks (eg colours, get-up and packaging), or rights that had not been registered formally, but have acquired goodwill. The law of passing off entitles a trader to prevent other traders from unfairly using its goodwill. It is unlawful for a trader to hold out that its goods or services have some association or connection with another trader when this is not the case. Passing off is a tort of strict liability: the intention of the trader liable for passing off is not relevant. An action founded on tort, such as passing off, cannot be brought after the expiration of six years from the date on which the cause of action accrued. For more information, see Q&A: What is the limitation period for a passing off claim? This Practice Note considers the three key elements of a claim for passing off in detail, as set out below. For a general introduction

Wholesale access products based on direct access to the physical infrastructure of the network, without the need to connect to electronic equipment.

This term refers to the offence committed by the party that requests, receives, agrees to receive or accepts the bribe.

Investment management that seeks to closely match the performance of a benchmark.

An investment manager who seeks to match closely the return of an investment benchmark.

A type of full passive wave division multiplexing (WDM) network that allows multiple locations to connect to one optical fibre strand (or wavelength) by using optical splitters to break up the wavelength of light into allocated time slots for each user. A PON consists of an Optical Line Termination (OLT) at the CO or MPoP (Metropolitan Point of Presence), splitters and a number of Optical Network Units (ONUs) near or at end-users premises. Typically, up to 32 or 64 end-users can be connected to a PON. The passive simply describes the fact that optical transmission has no power requirements or active electronic parts once the signal is going through the network. A PON reduces the amount of fibre and (CO or MPoP) equipment required compared with P2P architectures.

Passive sales mean responding to unsolicited requests from individual customers including the delivery of goods or services to such customers.

Wholesale access to a SMP (significant market power) communications provider’s (transmission) medium without any active or electronic component (eg access to ducts, dark fibre or fibre local loop).

A passively safe facility can be safely shut down automatically – without any operator intervention and without any external power supply from the grid or from backup generators to drive instruments or equipment. Following the disaster at Fukushima this has attracted greater attention.

A document establishing nationality.