Passing off
Case Note: Inter Lotto (UK)
Ltd. v Camelot Group Plc
Jane Lambert
3 Sep 2003
This case note originally appeared on the NIPCLAW website
The relationship between the common law action of passing off and trade mark registration was considered by Laddie J and the Court of Appeal in Inter Lotto (UK) Ltd. v Camelot Group Plc.
The issue arose in a claim by a private lottery operator against the licensee of the national lottery. Inter Lotto started to use the words “Hot Picks” from about August 2001. Camelot’s licensor applied to register the sign “Hotpicks” as a mark in October of that year and licensed Camelot to launch a game under that mark from July 2002. A preliminary issue was whether Inter Lotto’s goodwill was to be assessed from the date of the trade mark application or that of Camelot’s launch.
Laddie J determined that issue in favour of Inter Lotto. He rejected what he understood to be an argument that registration overrides any rights at common law.
On appeal, Camelot put its case more narrowly, contending that if Inter Lotto had not acquired any goodwill or reputation by the date of application for registration, it could not rely on any goodwill acquired subsequently. Dismissing the appeal, the Court held that s.2 (2) of the Trade Marks Act 1994 had preserved the action of passing off and that right of action could be lost only through acquiescence.
