An article discussing the tort of passing off, with reference to the case Reckitt & Colman Ltd v Borden Inc  1 All E.R. 873, also known as the Jif Lemon case, a leading decision of the House of Lords on passing off.
Passing off is common law tort created by judges. Available remedies for passing off include injunctive relief, delivery up of the offensive goods and damages to the owner of the rights or an accounting of profits by the offender.
Passing off is a type of unfair competition claim made by holders of unregistered trademarks to stop or prevent others from copying the mark, packaging or 'get-up' (brand name, trade description, individual features of labelling or packaging) and presenting the copied goods and services as if it were theirs. (Reverse passing off is where a third party without authorisation takes your goods and presents them as theirs.)
To establish this right of action, the claimant must show three elements sometimes referred to as the 'classic trinity' first enunciated in the House of Lords decision of Reckitt & Colman Products Ltd. v Borden Inc.  1 WLR 491. (This case is better known as the Jif Lemon case.) The three elements are:-
- The goods or services have acquired goodwill or reputation in the marketplace that distinguishes such goods or services from competitors;
- The defendant misrepresents his goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the claimant; and
- The claimant may suffer damages because of the misrepresentation.
What makes a passing off claim complex is that the holder has to submit market survey evidence to prove his goods and services have acquired goodwill and reputation in the relevant marketplace. The survey evidence submitted is subject to cross examination and challenges. A defendant may also submit market survey to show the contrary. The holder may also have to provide information on his advertising and promotional budget and sales revenue to support its claim that it has acquired goodwill and reputation.
If, on the other hand, a holder has a registered trademark, there is no need to show goodwill or market reputation.
Jif Lemon - Image from Wikipedia, licensed under Creative Commons
In the Reckitt & Colman case, the House of Lords affirmed a permanent injunction preventing Borden from marketing a lemon-shaped container to sell lemon juice. Since 1956, a predecessor of Reckitt & Colman had been selling lemon juice using a plastic container in the shape of a lemon. Eventually, the public identified the natural plastic lemon container with the Jif brand of lemon juice.
On the other side of the Atlantic, Borden's predecessor sold its concentrated lemon juice in its lemon-shaped plastic container under its own brand, called ReaLemon. The lemon-shaped ReaLemon product was also very popular in the US. In 1975, Borden entered the UK market selling its lemon juice in bottles. By the end of 1980, ReaLemon brand lemon juice had 25% of the total lemon juice market in the UK.
In the summer of 1985, Borden began selling its ReaLemon product in its lemon-shaped container in the UK. Reckitt & Colman became concerned and filed a lawsuit to stop the American company. Reckitt & Colman was successful in the lower courts and Borden took the case to the House of Lords.
Explaining the standard, which became known as the classic trinity, Lord Oliver asked:
- Have the respondents [Reckitt & Colman] proved that the get-up under which their lemon juice has been sold since 1956 has become associated in the minds of substantial numbers of the purchasing public specifically and exclusively with [their] ("Jif") lemon juice?
- If the answer to that question is in the affirmative, does the get-up under which the appellants [Borden] proposed to market their lemon juice in [the ReaLemon containers] amount to a representation by [Borden] that the juice which they sell is "Jif" lemon juice?
- If the answer to that question is in the affirmative, is it, on a balance of probabilities, likely that, if the appellants [Borden] are not restrained as they have been, a substantial number of members of the public will be misled into purchasing the defendants' lemon juice in the belief that it is the respondents' Jif juice? (pp.500-501)
Lord Oliver observed that supermarkets tend to sell only one brand and possibly their own house brand of preserved lemon juice. He noted Reckitt & Colman's survey evidence showing that "a housewife presented with a display of these products in close juxtaposition would be likely to pick up . . . the [ReaLemon] product in the belief that what she was buying was the respondents' Jif lemon juice" (p. 500) since Jif was the only "lemon-sized squeezy pack of lemon juice on the market" (p. 501).
Concluding that the three elements are satisfied, the Lords affirmed the permanent injunction barring Borden from marketing lemon juice in lemon-shaped containers in the UK.
Had the Jif lemon been a registered trademark, the case would have been much simpler to prove. Infringement is established if it can show that Borden's ReaLemon container is identical or similar to the Jif lemon and that allowing the ReaLemon container in the market is likely to cause public confusion. Section 18, Trade Mark Ordinance (Cap. 559).
One may ask, if the Jif lemon had been sold since 1956, why wasn't it registered as a trademark?
The answer is that, had they applied to register the Jif lemon as a trademark, the application would have been rejected by the registrar. This is because a mark that is a symbol of the goods or services it promotes does not qualify for registration. So, the Jif lemon is a symbol of lemon and lemon juice so it cannot be registered. If it is registered, it would prevent others from using a symbol of a lemon to sell lemon or lemon juice. Thus, Reckitt & Colman could only resort to a passing off claim in their fight against competition from ReaLemon.