Lottery of passing off and trademark law highlighted by Court of Appeal

United Kingdom

In Inter Lotto (UK) Ltd v Camelot Group plc, the Court of Appeal has upheld a High Court ruling on a preliminary issue and confirmed that under the law of passing off, the relevant date for assessing the goodwill and reputation built up by a claimant is the date the defendant started its alleged offending conduct.

Inter Lotto and Camelot Group both run lotteries. In August 2001 Inter Lotto began promoting a lottery game under the name Hot Picks. The game came into operation in November 2001. In July 2002 Camelot launched a new game called Lotto Hotpicks. It had applied to register a HOTPICKS mark on October 17 2001. Inter Lotto brought proceedings against Camelot for passing off.

Dates were of central importance to the case as Inter Lotto had built up most of its goodwill after the date Camelot applied to register HOTPICKS. Inter Lotto argued that it should be entitled to rely on goodwill built up until the date Camelot launched its new game under the allegedly infringing name (ie, July 2002), by which time Inter Lotto's game had become well established. This argument was based on the principle that liability in passing off falls to be determined as at the date of the commencement of the conduct complained of. However, Camelot contended that the relevant date for assessing Inter Lotto's goodwill was the date of Camelot's trademark application - October 17 2001. The High Court ruled in favour of Inter Lotto and Camelot appealed (see Lottery winner awaited following preliminary ruling).

The Court of Appeal dismissed Camelot's appeal. It confirmed the general principle that under the law of passing off, the relevant date for assessing the goodwill and reputation of a claimant is the date of commencement of the conduct complained of. Therefore, the relevant date of assessment, in this case, was the date Camelot launched its lottery game and not the date it applied to register its mark.

It will be interesting to see the result of the full trial because if Inter Lotto can establish its reputation and goodwill as at the date of the trademark application, it will be able to defeat the application by virtue of its earlier right to the unregistered HOT PICK mark. By contrast, if it is unable to establish an earlier right as at that date, it will have no valid grounds for opposing registration. The court will also have to resolve an apparent conflict between trademark and passing off law since Inter Lotto's use of its Hot Pick name after Camelot's application may be an infringement of Camelot's trademark, but it is also possible that Inter Lotto can rely on such use to improve its passing off claim.

Nick Rose, Field Fisher Waterhouse, London

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