Passing off

The plaintiff, Antec International Limited ("Antec"), had for many years manufactured and sold an agricultural disinfectant known as "Antec Farm Fluid S".    At the Stoneleigh Show in May 1996, South Western Chicks (Warren) Limited ("SWC") advertised and exhibited a competing disinfectant under the name "SWC Super Farm Fluid".     On the 6th November 1996 Laddie J granted Antec an interlocutory injunction to restrain SWC from selling disinfectant under that name.    SWC offered Antec a permanent undertaking in the terms of the final order without admission as to liability at the outset of the trial whereafter the only issue between the parties was costs.     At the parties' request, Mr. Hart directed a trial on witness statements only pursuant to Order 38 rule 2A (17) of the Rules of the Supreme Court.    It was common ground that Antec had to prove goodwill or reputation, likelihood of confusion and damage, but each of those issues was contested. First, SWC contended that the words "Farm Fluid" were so descriptive that no goodwill could or did subsist in them.    Secondly, it argued that it had distinguished its product from Antec's by the prefixes "SWC" and "Super". Finally, it submitted that Antec had neither suffered, nor was likely to suffer, any loss or damage.    

Each of those contentions failed.     The deputy judge found that Antec's product was the market leader in the United Kingdom. It had been on sale since 1972 originally as "Jeyes Farm Fluid" and later as "Antec Farm Fluid" or "Antec Farm Fluid S". None of the competing brands was sold under a name remotely similar. Trade witnesses said that farmers associated the words "Farm Fluid" exclusively with the plaintiff's product.    Mr. Hart dismissed SWC's submission that the appellation was descriptive:

"The words `farm' and `fluid' are, of course, part of the common of the English language, but the words `farm fluid' in conjunction are not. Moreover merely acknowledging that they are merely English words does not by itself enable one to say that they simply describe the product.   As ordinary English words their conjoined use conveys nothing except the notion of a liquid substance in some way connected with a farm.   To be able to say that they are simply descriptive of the product sold by the plaintiff, evidence would be required of a general usage among farmers at least of the term `farm fluid' to describe agricultural disinfectants sold in liquid form, just as evidence was available in Gramophone Co.'s Application [1910] 2 Ch 423 showing that the word `gramophone' had come to be used by the public to refer generally to machines operating disc, as opposed to cylinder records, without connoting the source of manufacture."

The only evidence to the contrary was that Antec and its predecessor Jeyes Plc had disclaimed the exclusive use of the words "farm fluid" on registration of their marks in 1981 and 1987.    This evidence of attitude in 1981 and 1987 did not persuade the deputy judge to discount significantly the evidence of the plaintiff's goodwill.   Mr. Hart accepted evidence that SWC was likely to induce consumers to believe that its product somehow emanated from or was connected with Antec's which SWC could not explain or undermine.   Having found a likelihood of confusion he felt bound to infer a probability of damage and concluded that the claim to quia timet relief should succeed.