British Food Journal Volume 79 Issue 6 1977

Abstract

The connotations, associations, custom and usages of a name often give to it an importance that far outweighs its etymological significance. Even with personal surnames or the name of a business. A man may use his own name but not if by so doing it inflicts injury on the interests and business of another person of the same name. After a long period of indecision, it is now generally accepted that in “passing off”, there is no difference between the use of a man's own name and any other descriptive word. The Courts will only intervene, however, when a personal name has become so much identified with a well‐known business as to be necessarily deceptive when used without qualification by anyone else in the same trade; i.e., only in rare cases. In the early years, the genesis of goods and trade protection, fraud was a necessary ingredient of “passing off”, an intent to deceive, but with the merging off Equity with the Common Law, the equitable rule that interference with “property” did not require fraudulent intent was practised in the Courts. First applying to trade marks, it was extended to trade names, business signs and symbols and business generally. Now it is unnecessary to prove any intent to deceive, merely that deception was probable, or that the plaintiff had suffered actual damage. The equitable principle was not established without a struggle, however, and the case of “Singer” Sewing Machines (1877) unified the two streams of law but not before it reached the House of Lords. On the way up, judical opinions differed; in the Court of Appeal, fraud was considered necessary—the defendant had removed any conception of fraud by expressingly declaring in advertisements that his “Singer” machines were manufactured by himself—so the Court found for him, but the House of Lords considered the name “Singer” was in itself a trade mark and there was no more need to prove fraud in the case of a trade name than a trade mark; Hence, the birth of the doctrine that fraud need not be proved, but their Lordships showed some hesitation in accepting property rights for trade names. If the name used is merely descriptive of goods, there can be no cause for action, but if it connotes goods manufactured by one firm or prepared from a formula or compsitional requirements prescribed by and invented by a firm or is the produce of a region, then others have no right to use it. It is a question of fact whether the name is the one or other. The burden of proof that a name or term in common use has become associated with an individual product is a heavy one; much heavier in proving an infringement of a trade mark.

Citation

(1977), "British Food Journal Volume 79 Issue 6 1977", British Food Journal, Vol. 79 No. 6, pp. 185-224. https://doi.org/10.1108/eb011719