## Facts

- A cigar maker sold cigars under the brand name “Corona”; “Corona” was also used in the trade as a cigar size designation by multiple manufacturers.
- The defendant operated a restaurant that sold cigars to patrons.
- When customers asked for a “Corona,” the restaurant’s staff often supplied a Corona-sized cigar of another brand (e.g., “Partagas”) even though the plaintiff’s Corona cigars were available.
- Evidence showed that, in the restaurant’s context, more than half of customers requesting “Corona” meant the plaintiff’s brand rather than merely the size.
- The trial court found passing off and granted an injunction restraining substitution of other brands in response to requests for “Corona” unless the customer was clearly informed.
- The defendant appealed.

## Issues

1. Whether a term that is also used descriptively or generically (as a size name) can support a passing-off claim when it has acquired a secondary meaning identifying the plaintiff’s goods to a substantial portion of customers.
2. Whether supplying another brand’s goods in response to an unqualified request associated with the plaintiff’s goods, without clear disclosure, is an actionable misrepresentation.

## Decision

- The Court of Appeal dismissed the appeal and affirmed the injunction.
- The court held that “Corona” had acquired a secondary meaning in the relevant setting such that a substantial portion of customers understood an unqualified request for “Corona” to mean the plaintiff’s cigars.
- The defendant’s practice of silent substitution was calculated to deceive (and did deceive) and therefore amounted to passing off.
- The defendant could sell other Corona-sized cigars, but could not supply them in response to requests likely understood as the plaintiff’s brand without clearly correcting that understanding.

## Legal Principles

- A descriptive or generic term may be protected through passing off if, in the relevant market and context, it has acquired a secondary meaning denoting a particular trader’s goods.
- Passing off can be committed through point-of-sale conduct and oral dealing, including substitution without clear disclosure, not only through labels or written descriptions.
- Likelihood of deception of a substantial portion of the relevant purchasing public is sufficient; universal deception is not required.
- Honest generic use by others does not excuse conduct that exploits a term’s acquired brand significance to divert trade through misrepresentation.

## Conclusion

The court affirmed injunctive relief because, although “Corona” functioned as a size name in the cigar trade, it also identified the plaintiff’s cigars to a substantial number of the restaurant’s customers, and the defendant’s undisclosed substitution of other brands in response to “Corona” orders was a misleading practice constituting passing off.


Havana Cigar & Tobacco Factories, Ltd. v. Oddenino, [1924] 1 Ch. 179 (C.A.)