THE CONTINUING IMPORTANCE OF LOCAL GOODWILL IN PASSING OFF

Extract

THE tort of passing off is embedded in the world of commerce. Its roots are in an age when customers patronised local speciality shops. Today it operates in a world of e-commerce operating across national boundaries. To succeed in passing off, the claimant must show it has goodwill, that there has been a misrepresentation, and as a result that the claimant has suffered damage or, in a quia timet action, that there is the likelihood of damage. Necessary to establishing goodwill is not only that the claimant's goods and services have a reputation in the relevant jurisdiction, but also that the claimant has customers there. The question raised in Starbucks (HK) Ltd. v British Sky Broadcasting Group Plc. [2015] UKSC 31; [2015] 1 W.L.R. 2628 was whether this principle is still relevant in what Lord Neuberger described as “the age of global electronic communication” (at [1]). The Supreme Court held that it was.