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131 L. Q. Rev. 476 (2015)
The New Tort of Passing off

handle is hein.journals/lqr131 and id is 476 raw text is: THE NEW TORT OF PASSING OFF Phillip Johnson Professor of Commercial Law, Cardiff University Johanna Gibson Herchel Smith Professor of Intellectual Property Law, Queen Mary, University of London The Unfair Commercial Practices Directive (2005/29), or UCPD, represents a fundamental shift in consumer protection law both at the European level and within the individual Member States.' In relation to the UK, when the Directive was implemented as the Consumer Protection from Unfair Trading Regulations 2008, it was described as the biggest shake-up in consumer law for over 40 years.' We suggest, however, that its reach goes far beyond consumer law and that it also has implications in relation to domestic unfair competition law: that is, the law of passing off.4 This observation is also made in a context where certain scholars, following decisions of the Court of Justice,' have suggested the law of trade marks is infiltrating and influencing the domestic law of unfair competition.' However, we say that it is not trade mark law, but rather, the harmonised consumer protection law that has most significantly affected the law of passing off.' The traditional law of passing off (that is, the law as it existed prior to the UCPD) is well established. There are three basic elements (the classic trinity) according to the notorious Jif Lemon case: goodwill in a mark or the get-up of goods; a misrepresentation leading the public to believe the goods supplied by one trader are those of another; and damage caused by reason of the erroneous belief.' In this discussion we will consider the extent to which these elements may have evolved, or indeed require refining, in order for the UK to comply with its EU As to previous attempts to harmonise unfair competition law across Europe see C. Wadlow, Unfair Competition in Community Law: Part 1: the Age of the 'Classical Model' [2006] E.I.P.R. 433 and C. Wadlow, Unfair Competition in Community Law: Part 2: Harmonisation Becomes Gridlock [2006] E.I.P.R. 469; also see F. Beier, The Law of Unfair Competition in the European Community: Its Development and Present Status [1985] E.I.P.R. 284 (also see an extended version at (1985) 16 I.I.C. 139). 2 Consumer Protection from Unfair Trading Regulations 2008 (SI 2008/1277). 3 J. Smith and R. Montagnon, The New Consumer and Business Protection Regulations: Another String to the Brand Owner's Bow? (2009) 4 J.I.P.L.P. 33 at 33. 4 Sir Richard Arnold has argued that the UK now has an unfair competition law made up of many different elements one being Directive 2005/29 another being passing off: Arnold, English Unfair Competition Law [2013] I.I.C. 63. 5 In particular L'Oreal SA v Bellure NV (C-487/07) [2009] E.C.R 1-5185; [2010] All E.R. (EC) 28; Martin YPaz Difusion SA v Depuydt (C-661/11) [2014] E.T.M.R 6; [2014] Bus. L.R. 329. See, for example, A. Kur, Trade Marks Functions, Don't They? CJEU Jurisprudence and Unfair Competition Practices [2014] I.I.C. 434 at 447 et seq.; and G. Dinwoodie, Dilution as Unfair Competition: European Echoes in R.C. Dreyfuss and J. Ginsburg (eds), Intellectual Property at the Edge: The Contested Contours oflP (Cambridge: Cambridge University Press, 2014), at p.90 et seq. 7The question of whether domestic unfair competition laws are pre-empted by Directive 2005/29 was postulated (but not considered) by A. Ohly, Interfaces Between Trade Mark Protection and Unfair Competition: Confusion about Confusion and Misconceptions about Misappropriation? in N. Lee et al. (eds), Intellectual Property, Unfair Competition and Publicity: Convergences and Development (Cheltenham: Edward Elgar, 2014), at p.33 and, in particular, at p.58. 8Reckitt & Coleman Products Ltd v Borden Inc (No.3) [1990] 1 W.L.R. 491 at 499; [1990] 1 All E.R. 873 HL at 880 (JzfLemon Case); also see the five elements identified by Lord Diplock in Erven Warnink BV v J Townend & Sons (Hull) Ltd (No.1) [1979] A.C. 731 at 742; [1979] 2 All E.R. 927 at 932-933. 476 (2015) 131 L.Q.R. July C 2015 Thomson Reuters (Professional) UK Limited and Contributors

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