The Privacy Perspective

Passing off is typically used to protect a person’s name or image, which has attracted goodwill as a business commodity. There are three well-established elements of passing off as stated in the case of Reckitt & Colman Products Ltd v Borden Inc & Ors [1990] RPC 341:

1. Goodwill or reputation in the mind of the public attached to goods or services;
2. The defendant misrepresented that their goods or services are that of the claimant’s; and
3. The claimant suffered or is likely to suffer damages due to erroneous belief in the mind of the public that the defendant’s goods are the claimant’s.

A case which illustrates this is that of Fenty v Arcadia [2015] EWCA Civ 3, a case involving Rihanna bringing a passing off action against Topshop. The action arose from Topshop’s unauthorized use of an image of Rihanna on a line of t-shirts. It was first considered that:

  “registered trade marks aside, no-one can claim monopoly rights in a word or a name. Conversely, however, no-one may, by the use of any word or name, or in any other way, represent his goods or services as being the goods or services of another person and so cause that other person injury to his goodwill and so damage him in his business” – p.34

However, it was concluded that all elements of the tort were made out by the claimant. Rihanna had a marked presence in the fashion industry and had generated significant goodwill. By using her image on its t-shirts Topshop created a likelihood of confusion between customers that the t-shirts were endorsed by Rihanna herself. They were not. It was, therefore, considered Rihanna suffered damage due to the unauthorized use of her image. This was despite the fact that there is no standalone right to protect one’s image at law.

The Fenty case is illustrative of how passing off can be used to protect elements of the person which are inherently private identifying factors. The foremost of these being the likeness of a person or their name.

It should be noted that the rationale from protection in passing off cases in protecting the goodwill which attaches to these elements of the person. The nature of a passing-off action is, therefore, more akin to other economic torts such as malicious falsehood. Notwithstanding this nature, the propensity for passing off actions to be used to protect elements of the persona that attract inherent private character is significant.