Passing off
Case Note: "NASA", Nice and
Safe Attitude Ltd. v Flook
Jane Lambert
Oct 1997
This case note originally appeared on the Lancaster Buildings website
Extensive sales and advertising in the United Kingdom can generate goodwill not only in a descriptive word mark like "Farm Fluid" but also in one that is associated with a foreign government agency that carries on a very different activity. The so called "worm logo" of the initials of the National Aeronautics and Space Administration of the United States ("NASA") is well known throughout the world. Almost everyone with access to a television set over the last 30 years will have seen those initials on space suits not to mention other sorts of other equipment used by American astronauts.
In Nice and Safe Attitude Ltd. v Piers Flook [1997] FSR 14 the
plaintiff had marked its dresses, jackets, sweatshirts and other
garments with the initials "NASA" in much the same style as the
US agency's "worm logo". There was evidence that it had sought but
not been granted permission to use that logo by the agency. The
plaintiff's clothes were distributed through over 250 retailers in the
United Kingdom and abroad. They were advertised extensively and
featured on television. The defendant, on the other hand, had
actually obtained the American agency's permission to mark his clothes
with the worm logo. On his application to vary undertakings that he had
given on a previous motion, Robert Walker J held that it is possible for
a trader to appropriate another's name and reputation in another field
and make it distinctive of his own goods so as acquire exclusive
goodwill in the trader's field of activity. He added that such
goodwill, even if acquired somewhat parasitically, will be projected
against the licensee of the originator. The US agency's only
activities in the United Kingdom were confined to scientific research
and the occasional sale of T-shirts and models bearing its insignia did
not affect the plaintiff's goodwill. He therefore refused to grant
the application.
