"Property in what?" - Goodwill, unregistered marks and the law of passing off

"Property in what?" - Goodwill, unregistered marks and the law of passing off

Journal article

1 online resource

In AG Spalding & Bros v AW Gamage Ltd (1915), Lord Parker famously rejected the idea that passing off protects property in unregistered trading signs per se, in favour of a theory that identifies goodwill as the property right underlying the cause of action. This decision is now widely regarded as the moment at which passing off was definitively placed on its modern theoretical foundations. In this article, based on a detailed reading of the case-law and literature on passing off between 1915 and 2025, it is argued that this narrative of the tort’s development conceals a significant, but largely unacknowledged, change that has taken place since Spalding v Gamage. At the time of Lord Parker’s speech, goodwill was envisaged as a relatively undifferentiated right in a claimant’s business. By contrast, the right protected by the law of passing off today is treated as though it subsists directly in individual trading signs. Ironically, it is therefore difficult to distinguish from the property in unregistered marks rejected as a foundation for the tort by Lord Parker. The article begins by explaining the origin and continuing significance of the theoretical framework deriving from Spalding and goes on to demonstrate the different understanding of the protected property (the ‘goodwill in the sign’ model) which prevails today. Having drawn this distinction, it explores the way in which ambivalence about the nature of goodwill in passing off is reflected in the metaphors employed to describe the protected property. It concludes by drawing attention to some of the potential consequences of the major historical shift demonstrated here.

Crossref

Intellectual Property Quarterly ; I.P.Q. 2025, 3, 153-179

[New York, NY] : Thomson Reuters, 2025.

English

https://1.next.westlaw.com/Copyright

External Online Journals > Intellectual Property Quarterly