Private Law Theory

ABSTRACT
In the tort of passing off, decision-makers regularly point out the continuity of doctrinal development and the ‘well settled’ nature of the law. Lord Parker’s speech in AG Spalding & Bros v AW Gamage Ltd (1915) plays a prominent role in this story of unfurling progress. In that case, he 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. It is argued here 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, to the extent that it was considered at all, goodwill was envisaged as a relatively undifferentiated right in a claimant’s business. By contrast, today, the right protected by the law of passing off is generally treated as though it subsists directly in individual trading signs. Ironically, therefore, it is difficult to distinguish from the right in unregistered marks so emphatically rejected by Lord Parker himself. This analysis, which is based on a close reading of judgments handed down since 1915, presents a historical account of conceptual and linguistic developments in the tort over the last century or so. In so doing, it questions orthodox narratives about its form and foundations and raises significant questions about the future of the cause of action.

Griffiths, Jonathan, ‘Property in What?’ – Goodwill, Unregistered Marks and the Law of Passing Off (September 1, 2025). The paper has been accepted to appear in [2025] Intellectual Property Quarterly, but this is a pre-publication/formatting draft.