Goodwill – Misrepresentation – Passing off – Vacuum cleaners

Numatic International ltd v Qualtex UK Ltd: ChD (Patents Ct) (Mr Justice Floyd): 28 May 2010

The claimant company (N) issued proceedings against the defendant company (Q), alleging passing off. N manufactured successful ranges of vacuum cleaners for commercial and domestic use, the best known of which was the Henry, consisting of a tub-type construction with domed black lid (which some people recognised as a bowler hat), below which the cylinder was red with a printed smiling face with the hole where the hose emerged as the nose. N had invested significant resources in giving Henry an anthropomorphic character and appearance, and the Henry range enjoyed an excellent reputation for reliability.

Q, which was also engaged in the vacuum cleaner market, had formed the intention to have manufactured and to sell a replica of the Henry cleaner and informed N of that plan, although it stated that it would not use either the Henry name or face. N, having asserted that rights subsisted in the shape independently of the Henry name, the smiley face and the red and black colourway, asked Q for undertakings not to market the product. Q promised to take active steps to distinguish its product, but at a subsequent cleaning trade show, exhibited a prototype of the replica product which, while in blue and lacking a face and with a circumferential flange or skirt around its base, had a bowler-hatted lid in shiny black.

N issued quia timet proceedings and applied for an interim injunction, and Q undertook not to sell vacuum cleaners having the appearance of the replica. By its defence, Q contended that since the cleaning show, it had done further work on the design and branding of the prototype and that the machine which it intended to sell had a bumper band and tool caddy, with the words Quick Clean Equipment and Commercial on it. N did not contend that the sale of that machine would be passing off. It fell to be determined (i) what, if anything, Q was threatening to do at the date of the commencement of proceedings; (ii) whether any threat which existed had continued following the service of the defence; and (iii) whether anything which Q threatened to do amounted to passing off.

Held: To make good a claim in passing off, a claimant had to demonstrate (i) a goodwill or reputation attached to the goods he supplied in the mind of the purchasing public by association with the identifying ‘get up’; (ii) a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead it to believe that goods offered by him were the goods of the claimant; (iii) that he suffered, or in a quia timet action that he was likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods was the same as those offered by the claimant, Reckitt & Colman Products Ltd v Borden Inc (No3) [1990] 1 WLR 491 HL followed. A claimant, such as N, who brought a quia timet action, was necessarily obliged to prove the elements of its case on a somewhat theoretical basis, and N had to show that it was justified in commencing proceedings because Q was threatening to do acts which would amount to passing off.

On the evidence, at the date of the show and thereafter until proceedings were commenced, Q was threatening and intending to launch a machine on the market with substantially the appearance of the prototype, although that threat was removed after the defence was served. There was no real dispute that N had a protectable goodwill and reputation in the combination of features of the Henry vacuum cleaner. Given that reputation, the sale of the replica (which lacked the smiley face and name but retained the shape and bowler hat) would make a damaging misrepresentation. Survey evidence from members of the public provided support for the view that the replica prototype conveyed a strong message that it was a genuine Henry, and that there was a real likelihood that at least some members of the public would buy it thinking that it was a Henry.

The present case was not one where it was simply the shape of a functional article which was relied on: the Henry cleaner was seen by the public as having the appearance of a small person, and to that extent the shape had a secondary meaning. Furthermore, it was not implausible to suppose that members of the public would still recognise the product even if one or more of the elements which gave it that character were removed, provided enough remained to convey the same message. The omission of the face and name from the replica was not sufficient to avoid passing off: not all sensible purchasers would be put on enquiry by their absence. In those circumstances, the quia timet action for passing off succeeded.

Judgment for claimant.

Michael Bloch QC, James Abrahams (instructed by Arnold & Porter) for the claimant; John Baldwin QC, Lindsay Lane (instructed by DLA Piper) for the defendant.