(Oral)

Gopal Sri Ram JCA:

This is the judgment of the court.

The appeal herein is directed against the order of the High Court granting the respondent (plaintiff in the court below) a perpetual injunction and other anxillary reliefs against the appellant (defendant in the court below). The matter arose in this way.

The plaintiff is the successor in title, by assignment to the goodwill in the business concerning the sale of couplers. A coupler is a device which connects the prime mover or tractor to the trailer of a vehicle used to carry goods by road. It can be disengaged and therefore is a very convenient device for the delivery of goods to customers' warehouses. The plaintiff's coupler is known as & quot;YORK BIG D& quot;. At the material time another type of coupler similar to that sold by the plaintiff came into the market. It was manufactured in China. It was sold and distributed by the defendant. The plaintiff took the position that the defendant had violated its commercial interest. So, it brought an action in the tort of passing off against the defendant. That action was tried in the High Court and after a protracted hearing, the High Court granted the reliefs we adverted to in the opening paragraphs of this judgment.

The main and indeed only ground, on which this appeal is based is whether the plaintiff has made out sufficient goodwill to maintain an action in passing off. Learned counsel for the defendant in a careful and concise argument has submitted that when the case is looked at as a whole, there is insufficient material establishing goodwill in the plaintiff's favour.

This sole issue raised in the appeal brings into sharp focus the ingredients necessary for a plaintiff to establish before he can succeed in an action in the tort of passing off. Now, there are five elements which a plaintiff must prove before he may succeed in the tort of passing off. These elements were set out by Lord Diplock in his speech in Erven Warnink v. Townend & Sons [1979] AC 731, 742:

My Lords, A.G. Spalding & Bros. v A.W. Gamage Ltd 84 LJ Ch 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

It will be seen at once that goodwill is an essential element of the tort. Absent any goodwill, a plaintiff has no cause of action.

Thus in Athletes' Foot Marketing Associates Inc. v. Cobra Sports Ltd [1980] RPC 343, the plaintiff who carried on a retail shoe franchising business mainly in the United States had prospective franchisee in England but had not commenced trading there. Evidence was led to show public knowledge of the plaintiff's business. However, no one in England had bought anything from one of the plaintiff's franchised shops abroad. The plaintiff's advertisements in American publications reached England. But there was no solicitation by way of postal trade. Walton J held that the plaintiff had failed to establish goodwill and accordingly refused to grant an interlocutory injunction.

The importance of the existence of goodwill was brought home by Lord Diplock in the advice of the Privy Council delivered in Star Industry Co. Ltd v. Yap Kwee Kor [1976] 1 MLJ 149 at p. 155:

A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing-off one person's goods as the goods of another. Goodwill, as the subject of proprietary