|Can you avoid passing off by not using a logo?|
There are eight decisions available on Bailii from 2010 to date. The latest case, The National Guild of Removers And Storers Ltd v Bee Moved Ltd & Ors  EWHC 3192 (IPEC), is in a similar vein to the earlier decisions. It concerns third parties passing themselves off as being members of NGRS after their membership had ceased and the extent to which the defendants should be liable for advertisements on third party websites.
The corporate defendant was Bee Moved Limited with the company directors added as alleged joint tortfeasors.
Advert 1 - on the defendants' website
The first advert included a moving checklist which also appeared on the Defendant's website. The second bullet point was "use a removal company who is a member of the National Guild of Removers and Storers". The judge noted that this bullet points implies that the defendants are NGRS members because otherwise the advertisement would effectively be saying use a different company to us. Although the NGRS logo was not used, the judge did not consider that the public would notice its absence.
Therefore the judge held that the moving checklist was an implied representation that the Defendant was a member of the Claimant and therefore damaged the Claimant's business and goodwill.
The defendants conceded that if the First Defendant was liable for the advert, all of the defendants were.
|Bee Moved by Bee Movie|
This is a popular house moving website which the first defendant had joined in 2004 when it was an NGRS member. Four entries on the site identified BeeMoved as a "Member of NGRS". This statement was untrue from 21 March 2013 and was repeated on the BeeMoved website. Whilst the BeeMoved website was updated from 21 March 2013, the directory entries were not known to the company at that time and were not updated. When the Defendant became aware of the entries (following receipt of a letter before action) he contacted Really Moving who told him that they had a problem with their site crashing and reverting to an earlier version. The Defendant asked for this wording to be removed immediately which it was.
The Claimant argued that as the wording originally came from the Defendants, they were liable for the use on Really Moving and a passage from Wadlow which noted that "it may be passing off for a Defendant knowingly to exploit an intending customer's own mistake or misconception, even if the Defendant was in no way responsible for the customer making that mistake" (para 5-26). Neither argument succeeded because (1) the Defendants could not control the actions of an Really Moving (an independent third party) and (2) it cannot be right that if Really Moving refused to remove the reference to NGRS, the Defendants could be liable forever; and (3) there was no evidence that anyone who contacted the First Defendant believed they were part of NGRS.
If the First Defendant had been liable for the second advert, the judge noted that following Sea Shepherd v Fish & Fish  UKSC 10, the individuals (i.e. the second and third defendants would have been liable as joint tortfeasors).