In the case of George East Housewares Limited v Fackelmann GmbH & Co KG  EWCH 2476, the IPEC has dismissed a claim for passing off brought by the company that makes and distributes the retro "Tala" measuring cup.
Since 1934, one of the most recognisable brands of measuring cups (so far as the UK is concerned) has been the "Tala" measuring cup - the conical shaped metal measuring cup, pictured below:
Before 2013, the company that makes and distributes the Tala cup, George East Housewares Limited (a successor to Taylor Law & Co Ltd), had a de facto monopoly in measuring cups of this shape. It also enjoyed a near monopoly in the cup's appearance since the early 1950's.
At a trade fair in Birmingham in 2013, George East Housewares Limited (the Claimant) discovered a competing and very similar measuring cup produced by the Defendants (Fackelmann GmbH & Co KG and its connected company Probus Creative Housewares Ltd), pictured below:
Apart from the shape of the cups, the similarities went as far as copying "stray inverted commas that are printed in one of the columns" on the inside of the Tala cup.
The Claimant therefore brought proceedings against the Defendants in the IPEC for passing off.
In a claim for passing off the Court needs to determine three issues, the so-called "classical trinity":
- Does the Claimant have goodwill in the goods in question? If so, in what? The "get-up", shape or brand name?
- Was the Defendant’s use of that goodwill such that it would misrepresent to purchasers that the Defendant’s goods came from (or were associated with) the Claimant?
- Has the Claimant suffered damage as a result of the misrepresentation?
For a passing off case to be successful, all three questions need to be answered in the affirmative. As the Defendants did not use the Tala brand on their cups, this case concerned the shape and appearance of the products alone (the "get-up" of the cups), which is famously harder to prove than establishing goodwill in a brand name or logo.
For example, not only did the Deputy Judge refer to the classic key cases on passing off of shape and/or get up (such as Reckitt & Colman Products Ltd v Borden Inc (No 3) (the Jif Lemon case),  RPC 341], Schweppes Ltd v Gibbens (1905) 22 RPC 601, and Numatic International Limited v Qualtex UK Limited  EWHC 1237 (Ch)), which all identify the difficulties associated with claiming passing off in a shape or get-up, she also noted that there "are real difficulties in proving that trade dress or get-up has acquired a secondary meaning as an indication of trade origin, where, as here, it is consistently used alongside a trade mark or name".
The Deputy Judge also mentioned the recent London Taxi case, repeating Arnold's conclusion that reliance is "the acid test for the purposes of acquisition of goodwill in a shape for the purposes of English passing off law." Lastly, she set out the current test for the level of confusion required i.e. the test in Interflora Inc v Marks and Spencer Plc  EWCA Civ 1501 where Lewison LJ referring to Neutrogena  R.P.C 473 said:
"...There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By 'enough' I mean a substantial number of the plaintiff's customers or potential customers deceived for there to be a real effect on the plaintiff's trade or goodwill."
She went on to point out that "on appeal in Neutrogena Morritt L.J. had held that the correct test was whether a "substantial number" of members of the relevant public had been deceived. Lewison LJ concluded that the "important point is that passing off had been established even though most people were not deceived".
In its Particulars of Claim, the Claimant identified the following get-up in their measuring cups:
"a. The shape of the product (in use since 1934):
i. A conical shape with an overall shiny/metallic finish;
ii. A silver metallic circular base which consists of a wide base with a curled outer edge, raised edges leading upwards to a smaller flat circular platform upon which the cone shaped cup sits;
b. The brand name 'TALA' displayed at the top of the cone;
c. The get-up of the exterior of the product which includes:
i. A broad stripe of primary colour at the bottom of the cone within which appears a metallic/silver circular section with text appearing therein and an outer thin metallic/silver circle.
ii. A prominent stripe/central band on the cone of the same primary colour as the aforementioned broad stripe against a silver/metallic background with the text 'COOK'S MEASURE' appearing above it in black capital lettering.
iii. The use of the colours red, blue and/or black against a shiny/metallic finish.
d. The get-up of the interior of the product which includes:
i. A creamy/white coloured background which curls over the top of the cup onto the exterior;
ii. A series of vertical tables running down the cup with the outline of the tables and/or the text contained therein appearing in black and/or red;
iii. The names of the following foodstuffs: Rolled Oats Fresh Bread Crumbs... with measurements for each running down each table in grams or ounces highlighted in black." [Paragraph 12].
The five elements to the get-up were therefore (1) the shape of the cup, (2) the Tala name, (3) the design of and to some extent, the wording used on the (3) exterior and (4) interior of the cup, and (5) the brand name. As mentioned above however, this case only focussed on whether there was goodwill in features (1)-(4) without the brand name.
The Deputy Enterprise Judge, Miss Amanda Michaels, first considered whether there was goodwill in the shape and get-up of the measuring cups:
Goodwill in the shape
Although the Claimant argued that the shape of the measuring cup was synonymous with Tala (relying on an 'Icon Award' it won at the Excellence in Housewares Awards and various online product reviews), the Deputy Judge concluded that "the Claimant did not adduce any direct evidence from members of the relevant public or the trade to support its contention that the shape of the cup alone identified the trade origin of the product. Nothing in the evidence suggests that members of the public knew that the measuring cups of that particular shape had only been sold under the Tala brand, still less that they associated the shape with a single source." She also found that Claimant had not provided sufficient evidence to establish that their customers relied on the appearance of the measuring cup in order to get a Tala product. As a result she did not find that goodwill was attached to the shape of the cups.
Goodwill in the get-up
The Claimant sought to establish its goodwill in the get-up (as a whole or in relation to significant features of the get-up other than shape) by referring to the level of its sales and marketing, press coverage and customer reviews of its cups. The Deputy Judge once against dismissed this evidence as not directly relatable to the get-up of the Tala cups. She concluded that she was not persuaded that the Claimant "had proved that the get-up had goodwill at the relevant date in the absence of the Tala trade name", nor did she find "that one or more identifiable elements of the get-up had such goodwill".
Misrepresentation and damage
In case her conclusion on goodwill was wrong, the Deputy Judge went on to assess misrepresentation and damage.
Although Miss Michaels found that the shape and interiors of the cups were similar (she said that the Defendants had deliberately and fragrantly copied the Claimant's interiors), in her view: (1) there was nothing to suggest that consumers relied on the interior to indicate trade origin; and (2) these similarities were counterbalanced by the differences in the respective exteriors, which "gave a very different impression to the product as a whole." As a result she thought it would be unlikely that a trader or consumer would assume a trade link between the products.
Despite the Claimant giving examples of actual confusion (such as a photograph of the wrong product being used to illustrate an article in The Independent), the Deputy Judge did not have sufficient evidence to determine how or why these photographs were used and found that evidence of actual confusion was lacking, although it was true that the Defendants had sold "relatively small numbers" of their cups, so that confusion might not have arisen as yet.
The Deputy Judge concluded that whilst some consumers might be confused, the "conspicuous differences" between the cups meant that the number of people likely to be confused would be too low to satisfy the Interflora/Neutrogena test. As a result, the Deputy Judge did not consider the Defendants' acts to have caused any damage to the Claimant and dismissed the claim for passing off.
Was it a measured decision?
Despite selling the Tala cup for over 80 years and enjoying a near monopoly in its shape and appearance, this claimant failed to establish goodwill in the shape and get-up of its product.
This case therefore highlights the difficulties of establishing a passing off claim for similar trade dress or get-up, particularly if the competing products are sold under different brand names.
It also teaches us the importance of evidence in passing off claims. In particular, claimants trying to prove goodwill in get-up or shape, in the absence of a trade name, must remember to: (1) prove reliance, as per London Taxi; (2) provide direct evidence from members of the relevant public or the trade to support contentions that the product's shape alone identifies the trade origin; (3) prove that any sales, marketing, press coverage or customer reviews are directly relatable to the get-up or shape of the product; (4) provide clear examples of actual confusion; and (5) prove that a substantial number of members of the relevant public have been deceived (i.e. to satisfy the Interflora/Neutrogena test).