27 September 2021
Brands Update – September 2021 – 3 of 4 Insights
In an important ruling in Original Beauty v G4K Fashion, the English High Court has considered whether emulating aspects of another business – including its website – amounts to passing off. The Court reluctantly found no passing off despite clear evidence that the defendants had "obtained an advantage by copying a successful competitor".
The claimants sell bodycon and bandage garments under the main brand House of CB. The defendants are competitors who also sell bodycon and bandage garments online under the brand Oh Polly. The action for infringement of the claimants' unregistered designs was relatively straightforward. The more interesting aspect of the judgment is the Court's finding of no passing off.
The claimants alleged that the defendants emulated several aspects of their business in which they had goodwill. As a result, consumers would be deceived into thinking that the defendants' Oh Polly business was a sister brand of – or otherwise connected to – the claimants' House of CB business. The claimants emphasised that it was the fact that the defendant emulated a combination of elements of their business that amounted to passing off.
The evidence showed that there clearly were similarities between the respective businesses:
The defendants pointed to differences between the two businesses including their business and garment names.
The evidence established that consumers noticed similarities between some of the indicia relied on by the claimants and the judge was therefore satisfied that goodwill subsisted in those indicia. The judge also concluded that the defendants had clearly set out to emulate the claimants' business. However, he did not consider the evidence to indicate that there was a level of deception in the market. Even after several years of the similarities being apparent to consumers, there was no evidence that any consumers (other than perhaps one) considered the two businesses to be sister brands or to share a trade connection. Because of this, there was no misrepresentation and the passing off case failed.
The judge reached this conclusion with some reluctance. He noted that the defendants had "ridden on the claimants' coat-tails", and rather than investing in their own development, had "obtained an advantage by copying a successful competitor". However, he noted that passing off is "not a tort of unfair competition".
This case serves as a reminder of the difficulties in establishing passing off especially where the parties' business names are different. Flagrant copying and a clear intention to emulate another business is not enough of itself – a significant number of customers must be deceived. This can be difficult to show especially where businesses have successfully co-existed for some time.
To discuss the issues raised in this article in more detail, please reach out to a member of our Brands & Advertising team.