Erven Warnink v Townend [1979] AC 731, [1980] R.P.C. 31

Citation: Erven Warnink v Townend [1979] AC 731, [1980] R.P.C. 31

Link to case on WorldLII (reference).

Rule of thumb: If a ‘trademark’ is not registered, how does a person/business make a ‘passing off’ claim against another person/business for breaching their name/goodwill? There is a 5 point test & all of 5 parts must be proved before the Court can uphold an action for damages/injunction.

Judgment:

There is an extended 5 point test for raising a passing off claim, ‘It is possible to identify 5 characteristics which must be present in order to create a valid cause of action for passing off: 1, a misrepresentation, 2, made by a trader in the course of trade, 3, to prospective customers of his or ultimate consumers of goods or services supplied by him, 4, which is calculated to injure the business or goodwill of another trade (in the sense that this is a reasonably foreseeable consequence), and, 5, which causes actual damages to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so’, Lord Diplock at 742

Warning: This is not professional legal advice. This is not professional legal education advice. Please obtain professional guidance before embarking on any legal course of action. This is just an interpretation of a Judgment by persons of legal insight & varying levels of legal specialism, experience & expertise. Please read the Judgment yourself and form your own interpretation of it with professional assistance.