Popstar Rhianna says no to passing off

A passing off claim is a way of enforcing an intellectual property right. It can be used to try and prevent one trader from misrepresenting goods or services as being those of another, and to stop a trader from suggesting that his goods or services have some association or connection with another when it is not true.

Misrepresentation is not confined to trade names and trademarks, and can include such things as slogans and visual images where they have become part of someone’s goodwill or reputation.

A recent example is the case of Robyn Rhianna Fenty and others v Arcadia Group Brands Ltd (trading as Topshop) and another 2015. Topshop sold t-shirts showing an image of well-known pop star Rhianna. Rhianna’s case was that these were sold without her consent and amounted to passing off. She argued that the sales were damaging to her goodwill, particularly as she had associations with the fashion industry.

The court agreed that Rhianna was a style icon and that she had an association with fashionable clothing, acknowledging the connection and overlap between music and fashion, recognising that she had entered into contracts with other fashion businesses, and so accepting that she had goodwill in the industry. The judge also found that there was a misrepresentation as buyers would have believed that Rihanna authorised the t-shirts when that was not the case.

The court stated that if a substantial number of purchasers were likely to buy the t-shirt under that false impression, then this would be damaging to Rhianna’s goodwill and would lead to a decline in sales in her merchandising business, and a loss of control over her reputation in the fashion industry.

There is no separate image right which can be applied to protect against the reproduction of a persons’ image. However, this case shows that where circumstances allow there may be other ways to protect against the reproduction of an image through the law of passing off.

Paul Gordon is a partner in our dispute resolution and litigation department, and is an expert in different types of intellectual property disputes. This past year, Paul handled claims in the High Court and IPEC dealing with trade mark, copyright, design right and patent infringement as well as other commercial disputes.