Slogans – Just Sue It: The Tort of Passing-off 

publication 

 

Winter 2007 - (InBrief Spring 2007 )

InBrief Spring 2007

It will be recalled that passing-off is generally the wrong committed by a person who sells goods or carries on business in a way or manner or under a name, mark or description so as to mislead the public into believing that its goods or business are those of another. In Ciba-Geigy Canada Ltd. v. Apotex Inc ., the Supreme Court of Canada acknowledged three requirements for a successful passing-off action: existence of goodwill, deception of the public due to a misrepresentation, and actual or potential damage.

Traditionally, passing-off actions have been used in cases of confusing names or symbols. For example, in Toys "R" Us (Canada) Ltd. v. Manjel Inc ., the issue was whether the defendant could sell snack food under the trademark "Nuts ‘R' Us." Similarly, in Walt Disney Productions v. Triple Five Corp ., Walt Disney, owner of Fantasyland theme parks in California and Florida, sought a permanent injunction against the "Fantasyland" amusement park and hotel area in Triple Five's West Edmonton Mall. Triple Five was forced to rename its amusement park "Galaxyland," though it was allowed to keep the name of the Fantasyland Hotel.

Passing-off has seldom been tested with respect to confusing slogans. If Adidas or Reebok attempted to brand their athletic apparel as "Must Do It," trade-mark law aside, could Nike rely on the common law to quash this slogan?

A rare precedent is the British Columbia Court of Appeal's decision in Westfair Foods Ltd. v. Jim Pattison Industries . In 1985, Westfair-owned Real Canadian Superstore began advertising with the expression "Permanent Discount." This slogan was part of a logo displayed in flyers, shopping bags and other prominent places in its stores. In 1998, Pattison-owned Save-On-Food & Drugs displayed a logo containing the slogan in similar format. Westfair sought an injunction preventing Pattison from using the slogan based on s.7(b) of the Trade-marks Act , which essentially covers passing-off.

In his analysis, Wallace J.A. wrote:

To succeed on this submission, Westfair must establish that the logo in question had, through its use by Westfair, achieved a secondary meaning not directly related to the character or quality of the goods, services or marketing policy being offered to the public but rather constituted a secondary or new meaning; namely, the identification of Westfair's stores or business – with the result that one could only infer from its use by Pattison that Pattison was seeking to pass off its stores or business as those of Westfair.

Wallace J.A. took the view that Westfair failed to meet the "heavy onus" of establishing that the slogan acquired a secondary meaning identifying the claimant's goods or stores. He remarked:

[T]he likelihood of confusion among the shopping public, arising out of both these competing retail enterprises or "megastores" using the same descriptive words "Permanent Discount" to define the marking or pricing policy [is] non-existent.

What did Wallace J.A. mean by a heavy onus? In the House of Lords decision, The Cellular Clothing Company v. Maxton & Murray , Lord Davey explained it as follows:

[A] man who takes upon himself to prove that words, which are merely descriptive of the quality of the goods, have acquired a secondary sense to which I have referred, assumes a much greater burden – and, indeed a burden which it is not impossible, but at the same time extremely difficult, to discharge – a much greater burden than that of a man who undertakes to prove the same thing of a word not significant and not descriptive, but what has been compendiously called a "fancy" word.

Even absent Nike's trade-mark (which affords it significant legal protection), the prominence of the "Just Do It" slogan through nearly 20 years of use likely meets the heavy onus in our hypothetical example. Unlike "Permanent Discount," "Just Do It" has likely achieved a secondary meaning above and beyond the descriptive meaning that causes consumers to identify the slogan with Nike. Surely, the shopping public would be confused by an almost identical slogan sported – pun intended – by a direct competitor such as Adidas or Reebok. But not every company can effectively establish a slogan's secondary meaning in the minds of consumers. In Westfair, both litigants were large, successful organizations, whose businesses were described by Wallace J.A. as "megastores." The unsuccessful efforts of a big business such as the Real Canadian Superstore to protect its valuable slogan demonstrates the difficulty of relying on the common law; registration of the slogan as a mark under the Trade-Marks Act offers this protection.

This article appeared in InBrief Spring 2007.