Gardner Leader

Hooray for Henry: Brand Imitation and 'Passing Off'

Chris Felton, Dispute Resolution Partner, comments on the law relating to “passing-off” and the High Court decision in May this year involving the Henry vacuum cleaner! 

So why has “Henry” been in court

Mr Justice Floyd handed down a passing-off decision in Numatic International Ltd v Qualtex UK Ltd.  This case centred on the Henry vacuum cleaner and the potential scope of protection afforded in an action for passing-off.

What is passing-off?

The tort of passing-off exists to protect unlawful use of a brand or name and can include shapes.  In this case the claimant, Numatic, had sold the Henry vacuum cleaner in the UK since the early 1980s. We are all familiar with its distinctive features - the black bowler hat, red lower half, smiley face, the nose (where the suction hose left the body of the vacuum cleaner) and of course its name - Henry.  Henry’s design protection had come to an end and it sought to protect its product against unlawful use by Qualtex by demonstrating that:  

1.     It possessed a reputation and/or goodwill in the name/brand

2.     There was a name/brand misrepresentation by Qualtex which caused confusion

3.     Qualtex’s misrepresentation caused, or was likely to cause, damage to Numatic’s goodwill and brand

What had Qualtex done?

At some stage before 2008 Qualtex developed the idea to manufacture and sell a replica of the Henry because Henry's design protection had come to an end. Its view was that as long as it did not use branding that was too close to the Henry then it should be free to use the Henry concept.

Qualtex attempted to discuss its product with Numatic through correspondence and confirmed that it would not use the smiley face and would use distinguishing branding. Unsurprisingly, Numatic responded that it was the owner of the goodwill in the appearance of the Henry including its get-up and shape and that any attempt to market a replica would amount to passing-off.

Then what happened?

Qualtex exhibited its replica product at the Cleaning Show in March 2009 which proved to be the last straw. Numatic then issued proceedings for passing-off and issued an application for an interim injunction.

What did the Judge decide?

The key question for Mr Justice Floyd to consider was whether Qualtex's replica would deceive consumers into believing that it was in some way connected to Numatic. Historically it had been much more difficult to acquire reputation/goodwill in the shape or get-up of a product However, based on the specific evidence in this case the court held that Qualtex's replica would lead customers to be confused and Qualtex was liable for passing-off.

What were the court’s reasons?

·         Goodwill

The combination of features of the Henry had a protectable goodwill, being the black bowler hat, bright red base, smiley face and "nose". The evidence suggested that marketing of the Henry had personalised the Henry to more than just a shape in the minds of the public.

·         Misrepresentation

No actual sales of the replica had taken place so the court had to make some assumptions.  Numatic had commissioned a survey on whether respondents believed confusion would be caused and this coupled with witness evidence lead the judge to the conclusion that confusion would follow.

·         Damages

The Judge concluded that damage would follow this misrepresentation and accordingly held Qualtex liable for passing off.

So what lessons can be learned?

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