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bugshaw's studies by guffawing over my own. But yesterday I just couldn't contain myself, for I was reading about the Passing Off of the Imitation Jif Lemon.
For most people, 'passing off' is probably one of the lesser-known forms of intellectual property dispute. Patents, copyright and trademarks are everday concepts and it's easy to imagine how they can be infringed; registered design is probably less familiar but the principles are similar. Passing off, though, is not even defined by statute, as it is a common-law tort that has arisen through many years of court cases rather than by specific Act of Parliament. Despite this, it's very easy for most people to grasp what it is about: at its heart lies the simple premise that it is wrong for someone to trade on the (often hard-won) reputation of another. Although the first cases on what we today call passing off date from the early Victorian era, there are records going back to Elizabethan times of merchants bringing actions against imitators of their products.
So what does passing off entail? Broadly, it involves acting in such a way as to dishonestly misappropriate the business reputation of another. This may be by selling your goods as theirs, sell theirs as yours (e.g. so as to get an unjustified reputation for quality goods) or, most commonly these days, to imitate the 'get-up' of a competitor's product or marketing technique so as to make the public at large confuse your goods with those of somebody else.
Because passing off is on the face of it such a wide offence, the courts have traditionally been very stringent in applying it. A quick walk around the local supermarket will reveal numerous examples of goods that in some way ape the selling style of a (usually more expensive) competing product; just think of all the shampoo/conditioner combinations sold in vaguely green oval cross-section bottles. If every such case was actionable as passing off then there would be serious restraint on trade, something the courts usually try very hard to avoid. Nonetheless, there are regular blatant examples that do come before the courts, and about twenty years ago one such was Reckitt & Colman Ltd v Borden Inc, or the Case of the Squeezy Lemon.
As you might imagine, the claim in the case was that the defendant was selling, or preparing to sell, lemon juice in a small, lemon-shaped squeezy plastic bottle - in other words, in the very distinctive 'get-up' hitherto associated with Jif lemon juice. The plastic lemons were small, but the business interests at stake were clearly substantial, as the parties went to the High Court, and later not just the Court of Appeal but all the way to the House of Lords. But it was the first hearing that caused me such hilarity.
If you read Banana Wings you might have seen Dave Langford's splendid article on the 'Misleading Cases' pieces by A P Herbert. Herbert's eternal litigant, Albert Haddock, was always getting into bizarre scrapes with obscure or eccentric corners of the law; indeed, many of the stories were thinly-disguised digs by Herbert at some of the more outdated aspects of English law at the time. A flavour of his work can be found in this review (which, touching on another aspect of IP law, is a good example of Fair Use, both in terms of the amount of the source quoted and the scholarly context).
Anyway, reading the judgment in Reckitt & Colman Ltd v Borden Inc I rather suspect that Mr Justice Walton was a fan of Herbert, and finding himself hearing a dispute that could have come right out of Misleading Cases saw fit to channel him. Sadly the full judgment is not available on open sources, but a few excerpts will give a flavour:
The plaintiff carried out a series of experiments to see what the reaction of the public would be to being offered the defendant's lemons ... There was a third experiment, in which on pancake day (which is a day which naturally accounts for a large number of the sales of Jif lemon) the Mark III was prominently displayed in some co-operating supermarkets, in the trays which were proposed for its packaging, and once again the defendants' proposed lemon was picked up unhesitatingly by a larger number of shoppers under the impression that they were buying Jif.
It must not, however, be assumed that the defendants accepted this, as it were, lying down. Employing ingenuity worthy of a much better cause, they attempted to argue that when the various shoppers were asked whether they knew what the brand of lemon juice was, and answered that it was Jif, they did so in the mistaken belief that Jif was a generic word, and that they were accordingly using the word Jif in the same sense that, at any rate soon after the product was introduced, many people would have said that their vacuum cleaner, no matter by whom it might be made, was a “Hoover.” I regard any such suggestion—which was not supported by even a scintilla of hard evidence—as wholly fanciful.
So I consider that the evidence establishes beyond the slightest peradventure that the effect of the introduction of any of the defendants' lemons onto the market would be bound to result in many housewives purchasing them in the belief that they were obtaining the well known and liked Jif brand. I so describe it because many of the housewives who gave evidence before me knew of the brand from their mothers having used it, and indeed from the whole family having enjoyed it. All as a wholly satisfactory culinary delight; the more turbulent members of the family having also made use of the lemon when empty as a first class water pistol.
(I do like that "Employing ingenuity worthy of a much better cause ")
Walton J did go on though to tackle the awkward issue raised by this case:
The vice of a passing off action is that the defendant has so got up his goods as deceptively to resemble the goods of the plaintiff. I fully sympathise with the position in which the defendants find themselves. As Mr. Hobbs has so eloquently submitted, a lemon-sized lemon shaped squeezy pack is an extremely convenient and appealing package for a person wanting to sell lemon juice to put it in. And if, as is indeed the fact in the present case, there is at the moment when he wishes to launch his goods onto the market just one other supplier of that commodity so packaged, he is at once faced with an extremely difficult problem as to how he is to package his goods so as not to cause confusion with those of the first supplier.
This is a matter of some concern. A key thrust of IP law is to prevent abuse of monopolies by regulating and limiting them (although this sits ill with the ever-growing length of copyright). Although Reckitt and Colman could maintain a trademark in Jif, the design registration of their bottle was limited in length. Despite this, the lemon juice market was so strongly focussed on the distinctive Jif bottle that in effect any competition became imitation and thus passing off. Nonetheless, the evidence of confusion was so strong that the judge found himself bound to decide for the makers of Jif:
If I had had no evidence of the test purchases, I should not have had a second's hesitation in arriving at the conclusion that the proposed launch of the Mark I would inevitably entail passing off: with their eyes firmly fixed on the Jif lemon as something with which the various Marks of defendants' lemons were intended to be in direct competition, I find it quite impossible to believe that they did not, one and all, realise the inevitable consequence of their actions.
As I mentioned earlier, the case was appealed all the way to the House of Lords, which reluctantly felt itself unable to disturb Walton J's findings. As Lord Bridge put it:
Yet here is the paradox: the trial judge found that a buyer reading the labels proposed to be attached to the appellants' Mark I, II or III containers would know at once that they did not contain Jif lemon juice and would not be deceived; but he also enjoined the appellants from selling their product in those containers because he found, to put it shortly, that housewives buying plastic lemons in supermarkets do not read the labels but assume that whatever they buy must be Jif. The result seems to be to give the respondents a de facto monopoly of the container as such which is just as effective as de jure monopoly. A trader selling plastic lemon juice would never be permitted to register a lemon as his trade mark, but the respondents have achieved the result indirectly that a container designed to look like a real lemon is to be treated, per se, as distinctive of their goods.
If I could find a way of avoiding this result, I would. But the difficulty is that the trial judge's findings of fact, however surprising they may seem, are not open to challenge. Given those findings, I am constrained by the reasoning in the speeches of my noble and learned friends, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle to accept that the judge's conclusion cannot be faulted in law.
With undisguised reluctance I agree with my noble and learned friends that the appeal should be dismissed.
So there the situation rests: via a peculiarity of the law of passing off, you will find one and only one brand of small yellow lemon-shaped bottle of juice in your local shop, no matter how far you look, and even the House of Lords could do nothing about it.
bugshaw's studies by guffawing over my own. But yesterday I just couldn't contain myself, for I was reading about the Passing Off of the Imitation Jif Lemon.For most people, 'passing off' is probably one of the lesser-known forms of intellectual property dispute. Patents, copyright and trademarks are everday concepts and it's easy to imagine how they can be infringed; registered design is probably less familiar but the principles are similar. Passing off, though, is not even defined by statute, as it is a common-law tort that has arisen through many years of court cases rather than by specific Act of Parliament. Despite this, it's very easy for most people to grasp what it is about: at its heart lies the simple premise that it is wrong for someone to trade on the (often hard-won) reputation of another. Although the first cases on what we today call passing off date from the early Victorian era, there are records going back to Elizabethan times of merchants bringing actions against imitators of their products.
So what does passing off entail? Broadly, it involves acting in such a way as to dishonestly misappropriate the business reputation of another. This may be by selling your goods as theirs, sell theirs as yours (e.g. so as to get an unjustified reputation for quality goods) or, most commonly these days, to imitate the 'get-up' of a competitor's product or marketing technique so as to make the public at large confuse your goods with those of somebody else.
Because passing off is on the face of it such a wide offence, the courts have traditionally been very stringent in applying it. A quick walk around the local supermarket will reveal numerous examples of goods that in some way ape the selling style of a (usually more expensive) competing product; just think of all the shampoo/conditioner combinations sold in vaguely green oval cross-section bottles. If every such case was actionable as passing off then there would be serious restraint on trade, something the courts usually try very hard to avoid. Nonetheless, there are regular blatant examples that do come before the courts, and about twenty years ago one such was Reckitt & Colman Ltd v Borden Inc, or the Case of the Squeezy Lemon.
As you might imagine, the claim in the case was that the defendant was selling, or preparing to sell, lemon juice in a small, lemon-shaped squeezy plastic bottle - in other words, in the very distinctive 'get-up' hitherto associated with Jif lemon juice. The plastic lemons were small, but the business interests at stake were clearly substantial, as the parties went to the High Court, and later not just the Court of Appeal but all the way to the House of Lords. But it was the first hearing that caused me such hilarity.
If you read Banana Wings you might have seen Dave Langford's splendid article on the 'Misleading Cases' pieces by A P Herbert. Herbert's eternal litigant, Albert Haddock, was always getting into bizarre scrapes with obscure or eccentric corners of the law; indeed, many of the stories were thinly-disguised digs by Herbert at some of the more outdated aspects of English law at the time. A flavour of his work can be found in this review (which, touching on another aspect of IP law, is a good example of Fair Use, both in terms of the amount of the source quoted and the scholarly context).
Anyway, reading the judgment in Reckitt & Colman Ltd v Borden Inc I rather suspect that Mr Justice Walton was a fan of Herbert, and finding himself hearing a dispute that could have come right out of Misleading Cases saw fit to channel him. Sadly the full judgment is not available on open sources, but a few excerpts will give a flavour:
The plaintiff carried out a series of experiments to see what the reaction of the public would be to being offered the defendant's lemons ... There was a third experiment, in which on pancake day (which is a day which naturally accounts for a large number of the sales of Jif lemon) the Mark III was prominently displayed in some co-operating supermarkets, in the trays which were proposed for its packaging, and once again the defendants' proposed lemon was picked up unhesitatingly by a larger number of shoppers under the impression that they were buying Jif.
It must not, however, be assumed that the defendants accepted this, as it were, lying down. Employing ingenuity worthy of a much better cause, they attempted to argue that when the various shoppers were asked whether they knew what the brand of lemon juice was, and answered that it was Jif, they did so in the mistaken belief that Jif was a generic word, and that they were accordingly using the word Jif in the same sense that, at any rate soon after the product was introduced, many people would have said that their vacuum cleaner, no matter by whom it might be made, was a “Hoover.” I regard any such suggestion—which was not supported by even a scintilla of hard evidence—as wholly fanciful.
So I consider that the evidence establishes beyond the slightest peradventure that the effect of the introduction of any of the defendants' lemons onto the market would be bound to result in many housewives purchasing them in the belief that they were obtaining the well known and liked Jif brand. I so describe it because many of the housewives who gave evidence before me knew of the brand from their mothers having used it, and indeed from the whole family having enjoyed it. All as a wholly satisfactory culinary delight; the more turbulent members of the family having also made use of the lemon when empty as a first class water pistol.
(I do like that "Employing ingenuity worthy of a much better cause ")
Walton J did go on though to tackle the awkward issue raised by this case:
The vice of a passing off action is that the defendant has so got up his goods as deceptively to resemble the goods of the plaintiff. I fully sympathise with the position in which the defendants find themselves. As Mr. Hobbs has so eloquently submitted, a lemon-sized lemon shaped squeezy pack is an extremely convenient and appealing package for a person wanting to sell lemon juice to put it in. And if, as is indeed the fact in the present case, there is at the moment when he wishes to launch his goods onto the market just one other supplier of that commodity so packaged, he is at once faced with an extremely difficult problem as to how he is to package his goods so as not to cause confusion with those of the first supplier.
This is a matter of some concern. A key thrust of IP law is to prevent abuse of monopolies by regulating and limiting them (although this sits ill with the ever-growing length of copyright). Although Reckitt and Colman could maintain a trademark in Jif, the design registration of their bottle was limited in length. Despite this, the lemon juice market was so strongly focussed on the distinctive Jif bottle that in effect any competition became imitation and thus passing off. Nonetheless, the evidence of confusion was so strong that the judge found himself bound to decide for the makers of Jif:
If I had had no evidence of the test purchases, I should not have had a second's hesitation in arriving at the conclusion that the proposed launch of the Mark I would inevitably entail passing off: with their eyes firmly fixed on the Jif lemon as something with which the various Marks of defendants' lemons were intended to be in direct competition, I find it quite impossible to believe that they did not, one and all, realise the inevitable consequence of their actions.
As I mentioned earlier, the case was appealed all the way to the House of Lords, which reluctantly felt itself unable to disturb Walton J's findings. As Lord Bridge put it:
Yet here is the paradox: the trial judge found that a buyer reading the labels proposed to be attached to the appellants' Mark I, II or III containers would know at once that they did not contain Jif lemon juice and would not be deceived; but he also enjoined the appellants from selling their product in those containers because he found, to put it shortly, that housewives buying plastic lemons in supermarkets do not read the labels but assume that whatever they buy must be Jif. The result seems to be to give the respondents a de facto monopoly of the container as such which is just as effective as de jure monopoly. A trader selling plastic lemon juice would never be permitted to register a lemon as his trade mark, but the respondents have achieved the result indirectly that a container designed to look like a real lemon is to be treated, per se, as distinctive of their goods.
If I could find a way of avoiding this result, I would. But the difficulty is that the trial judge's findings of fact, however surprising they may seem, are not open to challenge. Given those findings, I am constrained by the reasoning in the speeches of my noble and learned friends, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle to accept that the judge's conclusion cannot be faulted in law.
With undisguised reluctance I agree with my noble and learned friends that the appeal should be dismissed.
So there the situation rests: via a peculiarity of the law of passing off, you will find one and only one brand of small yellow lemon-shaped bottle of juice in your local shop, no matter how far you look, and even the House of Lords could do nothing about it.
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no subject
Date: 2007-11-19 04:20 pm (UTC)For my part, the only way forward I can see would be to put passing off on a statutory basis, rather as it is in many European countries, and then insert an exception that prevents a passing off action being based on either (a) an expired registered design, or (b) a 'get-up' that cannot itself be trademarked. Alternatively, give courts the power to strike out passing off actions where there is evidence of a monopoly.
no subject
Date: 2007-11-19 05:02 pm (UTC)misleading consumers into thinking they're getting high-quality lemon juice of the sort reckitt and colman (presumably) put in the jif bottles, when you're actually selling dilute citric acid in yellow plastic lemons, is wrong. but reckitt and colman aren't the only people who can supply quality lemon juice, and if the product can be shown to be of equal quality, i don't see what harm is done *to the consumer*.
not that i'm *ever* likely to get to the house of lords, except maybe on the guided tour.