Legal Updates

Intellectual Property: Passing Off - Deception or Confusion

The case of Handi-Craft Co and another v B Free World Ltd and others [2005] concerned passing off in respect of baby feeding bottles.

This case involved two claimants. The first claimant, Handi-Craft Co, was based in the USA and manufactured baby feeding bottles ("the BOTTLE"). The BOTTLES were sold under the name DR BROWN'S NATURAL FLOW. The other claimant was the proprietor of a patent granted for the BOTTLES designed for equal pressure on either side of the bottle teat, resulting in easier feeding for babies that were likely to suffer from colic.

By way of background, Handi-Craft Co had granted a company, AT SA, a licence to market and sell the BOTTLES in the UK. In fact, AT SA's majority shareholder was B. A dispute arose between Handi-Craft Co and AT SA which led to litigation in the USA in which Handi-Craft Co was successful. The court held that the licence agreement between Handi-Craft Co and AT SA had been terminated.

Shortly after the court's decision in the USA, the wife and son of B incorporated a £2m company. The first defendant, B Free World Ltd (another £2m company), company took over distribution of the BOTTLES, which were sold under the name BFREE. The only shareholder in B Free World Ltd was the second defendant, B's daughter, who was a student.

The claimants brought an interim injunction for passing off to stop them selling the BOTTLES under the name BFREE. The claimants alleged that by using a similar logo r to DR BROWN'S NATURAL FLOW on the BOTTLES, the defendants were attempting to teach the relevant public that 'Dr Brown's' BOTTLE had been renamed BFREE. Their evidence (in the form of testimonials and product approvals) supported their contentions that DR BROWN'S BOTTLE was put on the market by the defendants as BFREE'S.

For the purpose of the interim injunction, the defendants accepted that the claimants had made out an arguable case, however, they disputed the level of damage which the claimants were arguing they had sustained.

The court granted the claimants an interim injunction. Laddie J, held that:

• The balance of convenience1 favoured granting the relief sought by the claimants although this was subject to a minor exception;
• The claimants' case in passing off was a strong one;
• The potential damage that could be caused if the defendants' activities continued would be substantial;
• There was no reason to believe that the defendants could pay any damages which might be awarded; and
• The continuation of the defendants' activities would result in continuing and significant deception of the public.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.