Even if your brand is not a registered trade mark, you may be able to prevent others using it on grounds of “passing off.” But what happens if you haven’t used it for a while? Jessica Stretch busts some myths.
Who: Andrew Knight v Beyond Properties Pty Ltd and others
Where: High Court
When: 24 May 2007
Law Stated as at: 25 June 2007
Between 1991 and 1996 the claimant, Mr Knight, published three children's books in the UK under the title "Mythbusters". In 2002 the first three defendants (collectively referred to as "Beyond") made three TV series under the name "Mythbusters" which investigated improbable events and was aimed at the "lads and dads" market. Mr Knight brought an action against Beyond for passing off. In order to bring a successful passing off action a claimant must establish three elements:
o Goodwill or reputation attached to the relevant goods;
o Misrepresentation by the defendant to the public leading the public to believe that the goods or services offered by him are the goods or services of the claimant; and
o Damage to the claimant caused by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the claimant.
Mr Knight's action for passing off was dismissed.
The judge held that a passing off claim could not protect goodwill which any reasonable person would consider trivial. The judge found that by the end of 1993, Mr Knight had established a minor reputation in connection with the use of the word "Mythbusters" to describe the investigation of myths for primary school-aged children. However, the judge concluded that, ten years later, by the end of November 2003 when the "Mythbusters" TV series was broadcast, Mr Knight no more than a trivial reputation in the "Mythbusters" name.
On the issues of misrepresentation and damage which were not crucial issues as Mr Knight failed on the first test on establishing goodwill, the judge commented as follows:
o On the issue of misrepresentation, the judge accepted there was scope for initial confusion but this would be dispelled once watching the Beyond programme which was aimed at an entirely different section of the public namely adults and not children.
o Mr Knight argued that he suffered damage because he was now unable to sell his "Mythbusters" concept to television producers. Whilst the judge accepted this argument in principle, the evidence showed that the claimant had made numerous unsuccessful attempts to sell his Mythbusters programme concept to TV producers. Consequently there was no loss to the claimant arising from the defendants' use of the Mythbusters name for a television programme.
Why this matters:
This judgement shows that mere use of a name does not automatically engender goodwill so as to preclude later use of that name or mark by another party. This is particularly the case where the original goodwill in the name or mark was minimal in the first place such that in later years the goodwill diminishes to the extent that it cannot be protected under the law of passing off.
However brand and media-owners should treat this decision with caution: a decision as to residual goodwill will vary on the facts of each case. Furthermore the creation of a title or name would often be protected as a registered trade mark which, if valid and in force, would bar use of the name or title in respect of similar and possibly even dissimilar goods and services.