GEORGE EAST HOUSEWARES LIMITED V (1) FACKELMANN GMBH & CO KG (2) PROBUS CREATIVE HOUSEWARES LIMITED [2016] EWHC 2476

The Claimant and its predecessors have made and sold conical measuring cups in the UK since 1934. The Defendants manufacture/ import kitchen products into the UK. In 2013 the Claimant found the Defendants displaying measuring cups similar to the Claimant’s “Tala Cook’s Measure” measuring cup at the Birmingham trade fair. The Claimant contacted the Defendants complaining about the similarities between the cups. Despite assurances from the Defendants’ solicitors that the Defendants would not restock the products the Defendants subsequently took delivery of further units. As such, the Claimant issued proceeding for passing off against the Defendants.

In the proceedings the Claimant and Defendants referred to various version of their measuring cups. Examples of the measuring cups can be seen below; the Claimant’s cup on the left and the Defendants’ cups on the right.

                                                                                                                          

             cup 1cup 2                                                                                    

In order to succeed in a claim of passing off, a Claimant must establish that it has goodwill in its product, that misrepresentation by the defendant causes customers to confuse the defendant’s product with the claimant’s products and that the claimant suffers damage. This case revolved primarily around establishing goodwill.


The Claimant submitted that its Tala range of cups is distinctive due to the shape of the product, the brand name “Tala” and the get-up on both the exterior and interior of the cup. The judge noted that the shape and size of the Claimant’s and Defendants’ cups were very similar and that the interior of the cup was clearly copied, even to the extent that a grammatical error was present on both cups. The court pointed out however that the external design of the cups was different and that the Tala brand name was not reproduced on the Defendants’ cups.
The Defendants’ submitted and the judge accepted that the Claimant’s needed to prove goodwill in their cup excluding the brand name Tala, as the Defendants’ cup did not reproduce the name. The Defendants’ accepted that the Claimant’s had a reputation for the cups, but denied that they had goodwill in the get-up or shape of the cups. The Claimant submitted evidence of the advertising spend for the Tala range and customer comments from various websites to help prove that goodwill existed in the shape, get-up or a combination of the two for its Tala cups.

The judge found the evidence produced by the Claimant did not establish that there was goodwill in the get up or the shape of the measuring cup, rather the evidence showed that the “Tala Cooks Measure” brand had a substantial reputation. None of the evidence submitted proved that any elements of the Claimant’s cup, other than the brand name, had established goodwill. The judge referred to London Taxi Corp v Frazer-Nash which states that reliance on the part of the relevant public is the acid test for acquisition of goodwill in a shape. Such reliance was not established in evidence by the Claimant. The judge went on to conclude 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.”
The judge decided to consider misrepresentation and damage, just in case she was wrong about goodwill.

The Claimant in its submissions relied on evidence from a newspaper article discussing the Claimant’s cup but using an image of the Defendants’ cup and online comments which possibly suggested customers were confusing the Claimant’s and the Defendants’ cups. Commenting on the evidence submitted the judge said “I am not convinced that any of these three matters proves that confusion has been occurring or is likely to occur.” She went on to mention the Interflora & Neutrogena cases which state that passing off requires a “substantial number” of people to be deceived. The judge noted that even if some people were confused by the Defendants’ cups that they were too few in number to accord to the Interflora & Neutrogena test.

The judge concluded that there are some similarities between the Claimant’s and Defendants’ cups but there are also conspicuous differences. She stated that “an average end consumer would not be led to assume from the get-up of the Defendants' cups that any of them are Tala cups” or that they are linked in any way and “the evidence does not show that the public has been educated to recognise the shape of a Tala cup as indicative of the origin of the goods”. The judge went on to say that “the number of people likely to be confused would be too low to satisfy the Interflora/ Neutrogena test.” Accordingly, the Claimant had not suffered any damage as a result of the Defendants’ actions and the claim was dismissed.

Link to Judgment

Judgment Date: 11 OCTOBER 2016

 

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