There are less than a handful of cases in the UK that have successfully established a claim in passing off based on a product’s “get-up”. A recent decision in the Intellectual Property Enterprise Court (“IPEC”), involving TALA measuring cups, confirms the difficulty in proving passing off by reference to only ‘get-up’, or what in other jurisdictions (such as the USA) is referred to as trade dress.
In George East Housewares Limited v Facklemann GMBH & Co KG and another  EWHC 2476, the claimant is an established manufacturer of kitchenware and successor to the business selling conical measuring cups under the TALA brand. It brought a claim against two connected companies that had begun, in January 2013, distributing in the UK similar shaped conical measuring cups, under the FACKLEMANN and DR OETKER brands.
The cups are designed for measuring dry foodstuffs, such as flour and sugar. One of the claimant’s cups on the left, and the defendants’ on the right.
The defendants did not use the TALA brand (or any other trade marks belonging to the claimant) on its products; however, the claimant chose to bring an action in passing off, based on the goodwill it said it has in the ‘get-up’ of its cups.
‘Get-up’ refers to the general appearance of goods, and includes (among other things) the shape, colour, overall packaging, the décor or the displays relating to the product.
The claimant argued that it had goodwill in the conical shape, and in the exterior and interior decoration of its cups. The claimant alleged that, by selling look-a-like products, the defendants would likely deceive some of the relevant public into believing that their own conical measuring cups were the claimant’s goods, or else associated with or approved by the claimant.
The key issue for the court to address was: did the claimant own, by January 2013 (when the defendants began trading in the allegedly infringing products), sufficient goodwill in the cup’s ‘get-up’, in connection with its business, to sustain a successful claim?
The three elements of passing off (originally stated in Reckitt & Colman Products Ltd v Borden Inc (No. 3)  RPC 341; the “Jiff Lemon” case) re-stated by Amanda Michaels, sitting as a deputy High Court judge in the IPEC, are:
- The claimant must demonstrate goodwill. The claimant needed to demonstrate that use of the conical shape and decoration for measuring cups, i.e. its ‘get-up’, was associated only with the claimant’s business, irrespective of whatever trade marks are used on or with the product. The court found that the claimant had not proved on the balance of probabilities the shape of the cups was the “crucial point of reference” for customers who wanted to buy a TALA cup
- The claimant must show a misrepresentation on the part of the defendant. The claimant struggled to prove the defendants’ look-a-like constituted an attempt to associate itself with the claimant’s business. The judge stated the claimant needed to show that a “substantial number” of people would be misled into thinking the lookalike product was connected to the claimant or its business.
- The claimant must show a risk it will sustain damage as a result of the misrepresentation. In the absence of goodwill and an actionable misrepresentation, the court did not consider the defendants’ acts to have caused any damage.
Set up your ‘get-up’
A potentially crucial downfall of the claimant’s case was its failure to identify specifically which features (apart from the conical shape) were the most significant element of its ‘get-up’. The design of the TALA cups had evolved over time. They had been in production for a number of years, and the judge (not the claimant) defined the ‘get-up’ as the: i) shape, ii) stripes, iii) colours and iv) interior design.
The judge examined several versions of the TALA cups against the defendants’ goods, and found a direct resemblance in the interior design. The exterior design exhibited a common theme (a band of blue combined with a shiny metallic finish) but the various ways that the colours were applied on the TALA products was “visually significant”.
The judge remarked, even if she had found goodwill in the ‘get-up’, “sufficient steps” had been taken by the defendants to distinguish their cups from those of the claimant. The differences in the exterior design gave a “very different impression” to the look-a-like product, a consideration which outweighed the similarities in shape and interior decoration. This was, in part, because the claimant brought forward no evidence to suggest that customers relied on the cup shape to determine trade origin.
The defendants were lucky in the finding that there had not been any passing off, which was in stark contracts to the judge’s view on the defendants’ actions. She described the defendants as having taken:
“…a decision to live dangerously, especially given the blatant copying of the interior of the Tala cup and the decision to use a shape closer to the claimant’s cup…”.
Nevertheless, in her ruling, the judge retreated to the position that:
“…[t]here are real difficulties in proving that trade dress or get-up has acquired a secondary meaning as an indication of trade origin…”.
It is notoriously difficult in the UK to establish a claim in passing off based solely on ‘get-up’. This is in spite of similar claims in other jurisdictions – e.g. unfair competition in Europe and claims based on trade dress in the US – being fairly well established.
Rose Smalley, a solicitor in Bond Dickinson’s Intellectual Property Department, suggests: “This result may stem from an entrenched view within the UK judiciary that consumers do not rely on shape as an indication of trade origin. This can be seen in passing off claims, and trade mark infringement and registration decisions. Until this preconception is addressed, we are unlikely to see any changes in rights-holders being able to protect products in this way.”
For brand owners, this case serves as an acute reminder that design and trade mark registrations remain the most effective means of protecting against copycat goods, as establishing a claim like this in passing off is still extremely difficult.