You are the Judge – stop trading on my idea!

 

The ninth scenario in our You are the Judge series is a situation in which it seems someone is allegedly trading off the hard work and creativity of someone else. This is known as passing off. Is it unfair, or is it simply the free market?

So, what do you think of this scenario?
 

Passing off - IP law
 

Mario of Mario’s Top Pizza has been running his takeaway business for years.

He takes great pride in sourcing high quality local ingredients and delivering excellent Italian pizzas to his increasing loyal customer base. He considers himself to be a man of the community, often sponsoring school events and sports teams, making his red, white and green livery a common sight around town.

Two months ago a new pizza parlour opened in town. Top Hat Pizza is a cheaper outfit run by Dave, a local businessman with a dubious reputation.

Like Mario, he uses red, white and green branding, albeit in more lurid eye-catching shades, and he uses a similar font for the name of his business. The food is cheaper, his pizzas are far worse quality, often delivered late, cold and with a paucity of toppings.

This has made Mario very angry. He is certain that his hard-won reputation has been damaged by the interloper. He has come to your court and has asked for a summary judgement to force Top Hat to change their branding or cease trading.

Can Mario do this? Is Dave allowed to trade on the popularity of what seems to be someone's idea and also a nation's identity?

The answer:

Mario has been very hasty in asking for a summary judgement. Cases like this are subtle, and as a judge you will need to consider the facts carefully.

The law does not allow businesses to pass off their products as someone else’s in order to benefit from their reputation, but they must go beyond merely having a similar name and branding. They must be similar enough to cause actual or likely confusion in the minds of the public. This is the crucial factor.

In this case, you will need to consider carefully whether someone might really think the products are the same. This is known as the ‘moron in a hurry’ test. In other words, someone could possibly make the mistake if they were particularly distracted or dim-witted, but this would be insufficient to count as passing off.

Refuse to give a summary judgement and hold a full trial to decide the facts. The end result could still be passing off, but it requires more information.

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