Déjà-vu, Doppelgangers and the Subtle Tort of Passing Off

We all love Nutella®. It’s that unmistakable creamy hazelnut richness and the universal conjuring of happy childhood memories that have given this mark its reputation, its followers and its timelessness. With more spin-off products than the Star Wars™ franchise, many local restaurants have devoted entire facets of their menus to muffins, crêpes, waffles and ice-cream… to all be generously laden with Nutella®. We would all be able to pick it out in a blind test, the distinctiveness of its taste being such that any attempt at imitation would surely be a vain enterprise.

Yet, you may have noticed that this hasn’t stopped other companies from trying to compete with Ferrero’s flagship mark. While some are genuine hazelnut spread alternatives, others have a more dubious approach to the notion of “competition”. If you take a good look in retail stores at the products physically surrounding Nutella®, you’ll notice an eerie and uncanny air of similarity between the jars. That feeling of déjà-vu isn’t a glitch in the Matrix™, it’s a carefully crafted imitation designed to make you think, almost subliminally, of Nutella®. While these are not necessarily tantamount to trade mark infringement, they are effectively teetering on the gray outer edges of what is permissible and what is not.

When a product is deemed to have gone beyond what is considered acceptable, the law of torts calls it “Passing Off”. In essence, the conditions for passing off are met where there is:

  • An established mark with a reputation to which substantial goodwill is attached;
  • Misrepresentation: When the customer believes there is a connection or association between the two entities;
  • Damage: When the original right-holder suffers from a loss of sale due to the misrepresentation. However, the mere risk of having the right-holder’s goodwill tarnished in any way can amount to damage under this tort.

Although passing off can be seen as the little brother to an action for trade mark infringement, its consequences can be just as severe. Identifying whether there can actually be a claim takes years of legal experience as it is one of the more subtle torts under UK law, and can only be assessed on a case-by-case basis. It is therefore important to always consult with Trade Mark Attorneys prior to launching a product, even if does not involve registering a trade mark.

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