The own-name defence in passing-off: Six pennyworth of thoughts from the other side

Interest in the supposed defence of honest use of one’s own name in passing-off has revived in the past decade, although the search for an unequivocal example of the defence continues to be unproductive. This article concentrates on the case of Newman v Adlem and the very different attitudes to the defence exhibited by Jacob LJ and Arden LJ in their respective judgments. It is suggested that Jacob LJ is probably correct in asserting that the defence does not really exist, but that in reaching this conclusion he appears to have misinterpreted the classic judgment of Romer J in Rodgers v Rodgers. In particular, it is argued that Jacob LJ has imposed on Romer J a supposed distinction between “confusion” and “deception” which was entirely alien to the latter’s way of thinking, while overlooking the distinction which Romer J really had in mind, which was between the inherent consequences arising from the use of the name per se, and those arising from all the other factors under the control of the defendant. The dissenting judgment of Arden LJ, by way of contrast, finds moral support from the opinion of Jacobs A-G in Konstantinidis v Stadt Altensteig-Standesamt, and from Article 8 ECHR, though probably not to the extent of reinstating the defence in anything like its full potential width.