Collo vs McDo

Legal concepts

“Passing off”

A common-law tort: passing off one's goods as those of another. It protects the goodwill attached to a sign, even without a registered trade mark.

In brief

  • A common law tort (United Kingdom, Ireland, Malaysia, Singapore, India, Australia…). It coexists with the law of registered trade marks.
  • Trade Marks Act 1994 (United Kingdom), section 2(2): “nothing in this Act affects the law relating to passing off”.
  • The “classical trinity” (Lord Oliver, Reckitt & Colman v Borden, 1990): goodwill — misrepresentation — damage.
  • Goodwill — the clientele attached to the sign — must exist in the territory concerned: reputation alone is not enough (Starbucks (HK) v Sky, UKSC 2015).
  • Difference from infringement: here, no registration is sufficient — everything must be proved in concreto.

Passing off protects something more concrete than a title: the actual clientele that a sign has built up. It does not ask whether you have registered a trade mark, but whether the public actually associates that sign with you, whether the competitor has misled that public, and whether you have suffered as a result.

It is a heavier action — three elements to prove, as matters of fact — but open to those who have registered nothing. And it has a counter-intuitive consequence for big brands: a worldwide reputation is not enough if the clientele does not exist locally.

McDonald's experienced this in Malaysia, in the dispute that pitted it for eight years against the McCurry restaurant in Kuala Lumpur: the Court of Appeal rejected the passing off claim, noting that the signage, menu and clientele of the two businesses had nothing in common. The Federal Court refused McDonald's leave to appeal in September 2009.

Sources

External sources.

  1. Trade Marks Act 1994, section 2 — legislation.gov.uk
  2. Starbucks (HK) Ltd v British Sky Broadcasting Group PLC [2015] UKSC 31 — The National Archives — Find Case Law

Where this comes up in the case file

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