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UPDATE

Get-up that doesn’t measure up to passing-off

16 May 2017 by Emmy Hunt & John Colbourn

George East Housewares Limited v (1) Fackelmann GmbH & Co KG and (2) Probus Creative Housewares Limited 11 October 2016

Introduction

This decision provides an examination of goodwill in the shape and get-up of a product in order to establish passing off by a copy product. Differences, over a number of years, in the appearance of the product sold to consumers, meant that it was difficult for the judge in this case (Deputy Enterprise Judge Amanda Michaels) to successfully identify the get-up in which goodwill may have existed. Furthermore, sales data relating to the specific products featuring that get-up was not available. As the first requirement in the test to establish passing-off is the existence of goodwill, the claim failed. However, the Deputy Judge went on to consider whether a misrepresentation and damage might have otherwise occurred and found that, on the evidence, this did not appear to be the case.

Background

The Claimant was a manufacturer of conical kitchen measuring cups that feature the brand “Tala” and which are widely sold in the UK. The measuring cups had been sold since 1934 by a predecessor and the Claimant had made and distributed the product since 1992. The product placed on the market had varied in its design with nine different forms of the measuring cup sold to the public between 1934 and 2013 (when the Claimant first complained about the Defendant’s products). The Claimant’s measuring cups (“Tala Cups”) are often referred to in the UK as a Cook’s Dry Measure because they are used to measure dry foodstuffs. The cup is made of tinplate and, on the inside of the conical shape is a printed measure for different weights of different foodstuffs. They are sold by a range of retailers including John Lewis, Lakeland, Debenhams, Tesco and Homebase as well as Amazon and eBay.

The two defendants, Fackelmann GmbH (“Fackelmann”) and Probus Creative Housewares Limited (“Probus”) were, respectively, a German manufacturer of household items and kitchen utensils and a connected company. The Defendants manufactured measuring cups that the Claimant first became aware of at a trade fair in Birmingham in February 2013. Probus’s product was extremely similar in size and shape and the interior was marked in the same way as the Claimant’s and clearly copied (they even included the same typographical error on the interior markings). However, the external design of Probus’s cup was different. The Claimant complained and Probus’s lawyers stated that they “will not restock the product that your client objected to” but shortly afterwards Probus took delivery of 2000 cups which had a near identical interior but a different exterior design.

The Claimant brought two claims for passing-off against Fackelmann and Probus. The Claimant relied upon goodwill in the get-up of the Tala Cups claiming that the Defendants’ own conical measuring cups adopted a similar get-up and passed off the Claimant’s product. The get-up claimed included five elements regarding (i) the conical shape and circular base of the cup; (ii) brand name TALA at the top of the cone; (iii) exterior get-up; (iv) interior get-up; and (v) the brand name. Of the five features, the Claimant relied on its acquired goodwill in features (i)-(iv) individually or in combination arguing that they were sufficiently dominant in the get-up that there was passing off, even though the Defendants product did not include the brand name (the cups were sold by Asda as the “Asda Dry Measure Cup” and Argos as the “Living Dry Weight Measure”).

The parties agreed that the shape of the Tala Cups had been broadly consistent across the nine different examples provided, although there had been small differences to the base and to the exterior and interior cup design.  All nine cup designs included the brand TALA. Although the Claimant pleaded that it had sold between 65,000-100,000 units per year, it later became clear that this figure related to all versions of the Tala Cups sold and were not broken down into sales of each individual style of cup.

The defendants denied that there was goodwill in the get-up of the Tala Cup and denied passing off.   The issues to be determined at trial related to i) whether the Claimant had goodwill in the get-up of the Tala Cup (and the pleadings did not list the Tala brand name as part of the get up); ii) was the get-up used by Probus such that it constituted a misrepresentation to consumers or the trade that the goods were associated with the Claimant; and iii) has the Claimant suffered any damage as a consequence of the misrepresentation?

Decision

Addressing the question of whether there was goodwill in the shape alone, the Deputy Judge stated that the Claimant would face an “uphill task in providing that a single feature of get-up of a product and especially the shape of the product itself - has acquired the necessary secondary meaning…” Due to the differences in the get-up of each of the nine Tala Cups, the Deputy Judge examined the similarity of each cup design against the Defendants’ cup. However, it was clear that there were significant differences between the Tala Cup designs that meant that certain cups did not bear the get-up pleaded in the Claim.

Addressing the question of whether there was goodwill in the get-up as a whole or in other significant features, Miss Michaels found that the discrepancy between the get-up of the nine different cups meant that it was not possible to establish what proportion of the cups sold between 2008 and 2013 featured the get-up claimed. Further, the evidence of goodwill originating from customer reviews indicated that customers did not rely on the get-up alone in identifying the trade origin of the cups. Instead, the reviews indicated that there was recognition and reliance on the “Tala name” rather than the pleaded features of get-up. The length of use alone was insufficient to show goodwill and there was no direct evidence from the public or trade that the shape of the cup alone identified the trade origin of the cup.  It was also considered relevant that the Claimant failed to object to the Defendant’s sale of a different cup of the same shape in the UK. Consequently, it was not found that goodwill was attached to the shape of the cups alone.

The Deputy Judge went on to consider whether there would have been a misrepresentation, if goodwill had been found in the get-up. She considered that the managing director of one Defendant had made a decision to “live dangerously” by seeing the Tala Cup at trade fairs and deciding to manufacture a generic version. However, this did not show an intention to pass off and a generic version could have been sold by the Defendants without it amounting to a misrepresentation (as was indicated by the Claimants agreement to certain proposed redesigns of the Defendants’ product in 2014). The Deputy Judge found that the interior of the cup was a flagrant copy of the interior of the Tala Cup, but that this did not affect the indication of trade origin of the goods. She went on to find that the similarity of the Defendants’ cup was counterbalanced by the differences in the exterior design which gave a very different impression to the product as a whole. Therefore, it was not likely that members of the trade or the general public would have assumed that the Defendant’s cup was a Tala Cup or that it came from the same manufacturer or was linked in trade in some way. Any such instances of confusion would be too few to satisfy the test in Interflora [2012] EWCA Civ 1501. As there was no confusion (or insufficient confusion) and so no misrepresentation of the origin of the Defendant’s product, there could be no damage, so the Claimant’s action would have failed even if it had shown goodwill in the claimed get-up.

Comment

The principal issue in dispute was whether the Claimant could show that it owned goodwill in the claimed features of the Tala Cup and whether there would be a misrepresentation arising from use of those features, not including the TALA brand name. The difficulty in proving that the trade dress or get-up has secondary meaning as an indication of origin has been examined in many previous cases (including, of course, the famous case concerning Jif Lemon [1990] RPC 341) and continues to arise in ‘copycat’ cases.  Without the right evidence to establish goodwill in the claimed features in the first place, succeeding in copycat product cases will always be an uphill struggle.  



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