Passing off “NOW”

The action for passing off is something that is always under the microscopic test and therefore, the proof of passing off rests upon a trinity tests i.e. goodwill, misrepresentation and damages. The plaintiff must prove that there is a goodwill attached to the trade mark or the get up which has been misrepresented by the defendant that leads the public to think that the goods or services are that of the plaintiff’s , and, damage has occurred to this misrepresentation to the plaintiffs’ business.

In 2015, the Supreme Court of UK has ruled that to establish passing off one has to establish goodwill. Mere reputation is not enough for establishing passing off. The main issue in this post is regarding a case wherein, the use of Sky’s NOW TV would lead UK viewers who were familiar with PCCW’s NOW TV to think that the former was the same as, or connected with, the latter.”

Though there is no evidence of actual confusion but the UK viewers who are familiar previously with the PCCW’S NOW TV would now think that it emanates from the latter. In fact the services are also identical essentially. The Court was not persuaded that the visual representation, the absence of Chinese language would in any way prevent the confusion among the viewers.

Most of the Chinese-speaking Community in the UK also speaks English. Viewers who are familiar with PCCW’s NOW TV may well think that it has gone into some kind of joint venture with Sky, and that the joint venture has chosen to focus on English-language programming for the UK market. Furthermore, references to NOW TV in the media sometimes do not mention Sky.

In this case the plaintiff’s conclusion seems to be incorrect as to prove passing off one need to prove goodwill and in absence of goodwill, only mere reputation is not sufficient for an action of passing off.