Passing off, protects the trading goodwill of a business. It is a common law right. Any business which has built up trading goodwill can bring a court claim to prevent third parties from passing off another’s goods or services as their own or on being linked with them in the course of trade.
A claim for passing off protects a trader's goodwill in trade names, slogans, packaging, logos or similar elements. Unlike a trade mark, it cannot be registered.
Bringing a passing off action
To succeed in a passing off action you will need to prove:
- Goodwill in the UK:- this is generated from a trading history in the UK in the particular product or services and by using the trade name or other distinguishing sign or get-up which is the subject of the complaint.
- Misrepresentation:- the infringer must have misrepresented his goods or services as another’s, whether intentionally or not. The public (usually consumers of the goods or services concerned) must have been deceived into thinking they were the rights holder’s goods or services. Mere confusion on the part of the public is not enough. If misrepresentation cannot yet be proved to have occurred, it must be shown to be likely to occur.
- Damage:- this can take many forms such as loss of sales, loss of licensing fees and loss of reputation. It is not necessary to prove actual damage but there must be at least a likelihood of damage.
Passing off is a highly fact-specific claim which can be helpful in a number of 'unfair competition' situations. The burden of proof in a passing off action is on the owner of the goodwill. Deception and confusion are generally the most difficult limbs to prove. Bringing a passing off action is generally more costly and time consuming than a registered trade mark infringement action, so clients are generally advised to register any protectable trade names and slogans where possible rather than rely on goodwill alone. However, passing off is broader than registered trade mark infringement and may succeed in cases where trade mark infringement fails, for example where the goods or services of the competitor are not similar.
What We Do
We work with clients to help them protect and exploit their trade marks (both registered and unregistered) and have extensive expertise in bringing passing off actions. We provide advice on clearance, licensing, branding strategies, transactional issues and all issues surrounding the enforcement and protection of trade marks in the Courts.