NAME: Princewill Nimi-ke-anga Anita .

Matric No_: 17/law01/263

COURSE: LAW OF TORTS II

ASSIGNMENT :

Question

Discuss the relevance of Passing Off as a form of Economic Torts in the 21st
Century Nigeria.
Use NALT guidelines for footnotes, you should also include a bibliography at the
end.
Times New Roman Font size 12, 1.5 spacing, maximum of 5 pages
Abstract

The concept of passing off has undergone changes in the course of time. At first it was restricted
to the representation of one person’s goods as those of another. Later it was extended to the
business and services. Subsequently it was further extended to professions and non trading
activities. Today it is applied to many forms of unfair trading and unfair competition where the
activities of one person cause damage or injury to the goodwill associated with the activities of
another person or group of persons.An action of passing off would be maintainable where the
plaintiff could prove injury to its business or goodwill, which could take a variety of forms even
though the defendant was not passing off its goods as the goods of the plaintiff. It is possible that
the defendant states the truth in its label or in the description, but partly mixes it up with
descriptions and devices which are misleading or which are likely to confuse an unwary
purchaser of the product. This work will talk on the meaning, aim, elements, forms or types of
passing off, the remedies and defences.

Meaning of Passing Off

1
Passing off is the false representation of ones product or business as that of another person,
thereby deceiving buyers to patronize it. It is also a deceit of the public to patronise one’s
business, product or services. Passing off is an unfair and unconscionable competition.

The selling of goods or carrying on of business under a name, description or mark in such a way
as tomislead
the public or consumers into believing that the goods or business is that of another person is
passing off.

2
Where a party (defendant) makes false representation in order to sell his goods and services
with the intention to deceive a purchaser (an innocent man) into thinking that the goods and
services he is selling are those of another party (the plaintiff), that is Passing Off. The tort of pass
ing off is practiced in Common Law countries like Nigeria, the United Kingdom, New Zealand,
Australia etc.The tort of passing off is designed to protect traders/ businessmen against unfair
competitionacquired by false or misleading information and to prevent a rival trader from
benefitting from the reputation already achieved by a trader/ businessman
1
M.Ese. Law of Tort. Ikeja, Lagos. Princeton Publishing Company, 2007.
2
R.F.V Heuston, Salmond on the Law of Torts (16th edn, Sweet and Maxwell London, 1973)408
3
In essence, “A man may not sell his own goods under the pretence that they are the goods of
another man”

Aims of the Tort of Passing Off

The following are what the tort of passing off seeks to achieve in every common law legal
system;

1.To enable businesses continue to earn profit and;

2.To protect the right of property that exists in goodwill (i.e. business value).

Elements of the Tort of Passing Off

A claimant needs to establish the following in order to succeed in an action of passing off;

1.Goodwill: The claimant must show the court that there is business value (Goodwill i.e. the
attractive force that brings customers) which is attached to the goods and services he produces in
a suit for passing off.

2.Misrepresentation: The claimant/ plaintiff needs to demonstrate and explain to the court that
the goods and services the defendant is offering the public deceitfully (whether intentionally or
not) are actually the goods and services of the claimant.

3.Damage: The claimant/ plaintiff needs to show to the court that a loss has been suffered due to
the belief that the goods and services of the defendant are those of the plaintiff/ claimant. (The
Claimant/plaintiff needs to show that the defendant’s activities are calculated to deceive the
public).

These (3) three elements known as the Classic Trinity were stated in the House of Lord’s case of

Reckitt & Colman products ltd v. Borden Inc. 4(HL 1990) per Lord Oliver.

Forms of Passing Off

The elements of passing off need to be proved in any of the forms which passing off can take
which include;

3
G. Kodilinye and O. Aluko, Nigerian Law of Torts(Spectrum Books Limited 1999) 221
4
HL 1990
 a)Trading under a name which is closely related to that of the claimant/ plaintiff such
name being likely to mislead the public: -
The wellestablished case on this is “ Hendriks v Montagu”5where the Universal Life
Assurance Society were granted an injunction by the court in order to restrain
the company of the defendant which was incorporated later on from carrying on business under
the name

“Universe Life Assurance Association”. In Nigeria, the court has decided a similar situation in :
Niger Chemists ltd. v. Nigeria Chemists [1961] 1 All NLR 1716 where Palmer J. granted an
injunction restraining the defendants from using the name “Nigeria Chemists” as it was
calculated to deceive those who had the intention to deal with Niger Chemists. It is important to
note that both parties in the suit were engaged in a similar business. Thus, where a name is made
to deceive a consumer or the public due to its similarity with that of a plaintiff then that is a form
of passing off and there exists a tort.

b)Trading under a name already given for goods of that kind by the plaintiff or trading
under a name so similar to that of the plaintiff’s as to be mistaken for it:-
Where a trade name is already in use by the plaintiff for his goods and services, it will be
actionable
passing off for a defendant to trade under the name of the plaintiff. 7A trade name is a name unde
r which goods and services are sold by a certain individual and which by established
usage has become known to the public to the effect that the goods and services are that of
the individual.8Descriptive names such as ‘water’, ‘beer’ ‘stout’ are not protected unless the
plaintiff can prove that thedescriptive name has acquired a secondary name exclusively
associated with the plaintiff’s own product.

c)A direct statement by the defendant that the goods and services are that of the plaintiff:-
Actionable passing off occurs where the defendant markets his products as that of the plaintiff.

5
[1881] 17 Ch. D 638
6
[1961] 1 All NLR 17
7
G. Kodilinye and O. Aluko, Nigerian Law of Torts (Spectrum Books Limited)1999
8
R.F.V. Heuston, Salmond on the law of Torts (16th edn, Sweet & Maxwell Londn,1973
See Byron (Lord) v. Johnston9… Here the defendant publishers were restrained from
advertising and selling a book of poems with the name Lord Byron written on the cover and title
page, when in fact the famous poet was not its author.

d)Where the defendant trades under the trademark of the plaintiff or any deceptive
imitation of the plaintiff’s mark.

A trademark refers to a mark used by a trader in order to indicate a connection between the
marked goods and the trader and also to show that the marked goods are the tradermerchandise10
See, Perry v. Truefitt…Here, the plaintiff obtained injunction to restrain the defendants from
selling a certain hair cream under the name of “Medicated Mexican Balm” or other similar
designations.

e)Imitating the Get Up or Appearance of the Plaintiff’s Goods:-

Where there are characteristics in the Get Up or appearance of the plaintiff’s goods which
identifies the goods as those of the plaintiff, any adoption or imitation of the appearance or get
up of the plaintiff’sgoods by another in a manner likely to deceive will give rise to the tort of
passing off. Thus, where the defendant imitates the get up or appearance of the plaintiff’s goods,
the defendant is liable for passing off. See Trebor Nigeria ltd v. Associated Industries ltd
(1972) NNLR 60 Suit no K/127/71 May 29 197211. Where the plaintiffs claimed that the
defendants were guilty of passing off their products as that of the plaintiffs. The court per J. R. J
ones (Senior Puisine Judge) held that the defendants had in every aspect from carton to tablet to
manufacturing marketed a product as similar as possible to that of the plaintiffs.

Remedies in Passing Off

Passing Off injures the property rights of the plaintiff especially in business. The following
remedies can be claimed by the plaintiff in a Passing Off action;

1.Damages: - A successful plaintiff in a suit for passing off is entitled to damages. The court can
award

9
[1816]2 Mer. 29
10
Section 67(1) Trade Marks Act CAP T 13 LFN 2004
11
Nigerian Law of Intellectual Property https://nlipw.com/a-peek-into-passing-off-cases-in-Nigeria
general damages, special damages or punitive damages. This is because it is presumed that the p
laintiff must have suffered losses especially in the course of business12.

2.Injunction: - A plaintiff can ask the court to restrain or prohibit the use of a mark subject
matter of the passing off suit in court. Further, a perpetual injunction can be granted by the court
when the suit has been concluded i.e. the defendant will never use the mark again.

3.A plaintiff can also approach the court to grant him/her the delivery of the goods of the
defendant which breach the trademark to be destroyed.

Defences available to a Defendant13

The following are available defences for a defendant faced with a claim of Passing Off;

1.Dissimilarities in the mark between that of the defendant and that of the plaintiff.
See Trebor Nig. Ltd14(Supra).

2.Consent of the plaintiff was sought before using the name or mark or slogan as the case may be

3.The defendant can also plead innocent usage of the plaintiff’s name.

4.The plaintiff’s name or mark has become common/ generic.

5.The mark of the plaintiff is not distinctive.

Conclusion

The purpose of an action for Passing off is to prevent one trade from damaging or exploiting the
goodwill and reputation built up by another. The principle is that no man is entitled to represent
his goods or his business as that of another. It is therefore our recommendation that the necessary

12
http://www.mondaq.com/Nigeria/x/704160/Trademark/
An+Appraisal+of+Passing+Off+Actions+under+Nigerian+law
13
M.Ese. Law of Tort. Ikeja, Lagos. Princeton Publishing Company, 2007.
14
[1972] NNLR 60
framework for Passing off actions be strengthened to defend the goodwill and reputation of
businesses. Furthermore, small and medium businesses should be enlightened and educated to
explore the possibility of seeking legal actions on Passing off and take advantage of the remedies
available to protect their goodwill, trade name and profits.

BIBLOGRAPHY

Books and dictionary

G. Kodilinye and O.Aluko. Nigeria Law of Torts. Abuja. Spectrum Books Ltd, 1999.

M. Ese. Law of Tort. Ikeja, Lagos. Princeton Publishing Company, 2007.

B. Garner. Black’s Law Dictionary 10th Edition, 2009.

R.F.V Heuston, Salmond on the Law of Torts (16th edn, Sweet and Maxwell London, 1973)408

Online Article

Diva Rai, ‘Meaning of Passing Off’ (The Tort of Passing Off, IPLEADERS)

https://blog.ipleaders.in/the-tort-of-passing-off.

Law Student, ‘Tort of Passing Off Project Assignment for Law of Torts’ (Law Teacher 2 Februar
y

2018) https://www.lawteacher.net/free-law-essays.php#ftn2 .

Michael Carter, ‘How to prove “Passing Off”’, (Mondaq 13 December 2017