What is passing off?
Passing off takes place when someone, such as a business, passes off another party’s goods or services as if they are their own, by misrepresentation. The law of passing off protects the goodwill of a business of person from other traders.
Passing off is governed by the civil law, and usually takes place in the business world where a misrepresentation is made by one party which damages the goodwill of another party, sometimes causing financial and or reputational damage.
Businesses have common law rights protecting them from passing off by others in relation to their slogans, names, packaging and other advertising elements where the company will have accrued some form of goodwill.
What are the elements to passing off?
No specific legislation governs the civil wrong of passing off. The law has been developed by the courts through case law. As the law currently stands, there are three essential elements that must be satisfied to prove passing off. The person or business making the claim (the claimant) must show:
- They possess a reputation or goodwill in their goods, name, mark, or other identifying feature that associates the public with those particular goods, and distinguishes them from others;
- There must be misrepresentation by the other party which has led others to believe the goods are actually those of the claimant. Confusion will not be sufficient to prove misrepresentation, and;
- This misrepresentation has caused damage to the claimant’s reputation or goodwill.
There is no definitive legal definition for these three elements. In practice, the most difficult element to prove is that of showing there is goodwill in a product or service – ie. a feature, name, or similar that attracts the consumer to a particular brand. This is what enables consumers to distinguish between the different brands on the market. The problem is, it is a very subjective test as the goodwill associated with a particular company may have very different effects on different members of the general public.
What is the link between passing off and trade marks?
Passing off is often relied upon when a product is unregistered as a trade mark. For example, a slogan or a name may not be registered as a trade mark, but it has sufficient goodwill attached to it to be protected by passing off laws.
Unfortunately, passing off claims can be much more time consuming and less straightforward than claims for trade mark infringement. If your name, slogan or similar feature is capable of being registered as a trade mark, then it strongly recommended you take legal advice in relation to registering it as a trade mark rather than risk having to rely on the common law of passing off in future.
If I have already registered my trade mark, can I also rely on passing off?
For more information on:
- Does passing off simply apply to businesses to business?
- What remedies are available for passing off?
- What defences are available?