Passing Off

What is Passing Off?

Passing off is governed by the law of tort meaning that it concerns a dispute between two individuals or parties rather than an action being brought against an individual party by the state.   Passing off is usually found within the world of business and relates specifically to a misrepresentation made by one party which damages the goodwill of another party.   In most cases this will be achieved by one party passing off the other party’s goods or services as those of their own.

In most cases businesses will have rights under the law of passing off in relation to slogans, names, packaging and other advertising elements where the company will have accrued some form of goodwill.

What are the elements to passing off?

The goods or services in question must have goodwill attached to them.  This specifically means that the goods will have particular identifying features or specifics that will enable members of the general public or a specific section of the general public to associate with those particular goods or services.

There must be a misrepresentation on behalf of the defendant that will lead or be likely to lead those members of the general public to believe that the goods offered by him are in fact the goods or services of the other company.  Please note that this misrepresentation does not have to be intended it just has to lead the public to believe that.

This misrepresentation damages the goodwill of the claimant.

Is there a legal definition of these tests contained in a statute?

There is no Statute concerning the law of passing off which has been developed in the UK solely by case law.

This means that there is no legal definition for the above three tests with the most difficult to prove that of goodwill in a product, something which is often described as the consumer attraction to a particular brand.  This attraction to a particular brand is what enables different consumers to distinguish between different brands on the market.  The problem is that it is a very subjective test as the goodwill associated with one particular company may have very different affects 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 something is unregistered as a trade mark.  For example a slogan or a name has not been registered as a trade mark but it has sufficient goodwill attached to it.   The legal action often involved with passing off can be much more time consuming and less straightforward than that of trade marks.  If you’re name or slogan can be registered as a trade mark then it is the best policy to register it rather than relying on the tort of passing off.

If I have already registered my trade mark can I rely on passing off?

There is existing case law where when dealing with the same facts an action brought for infringement of a trade mark was unsuccessful whereas the action brought for passing off was successful.  Passing off should therefore not be ignored as a legal remedy. 

Does Passing off simply apply to Businesses to Business?

A case concerning passing off had the effect of bringing the law of passing off into the realm of celebrity endorsements and created a significant use for it where a trade mark cannot be registered.  It was held that false endorsements amount to passing off under UK law. 

As it is the case for many celebrities to use their image to endorse various products if a company uses a celebrity image without permission in an advertisement for their product this may result in passing off if the following is proven:

  • That at the time of the acts complained of he had a significant reputation or goodwill;

  • That the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of the general public that his goods have been endorsed, recommended or approved by the claimant (in this case the celebrity).

A once purely business to business tort following this case an individual, albeit a famous individual, is able to bring a claim of passing off against a business.  

What remedies are available for passing off?

In the case of passing off the following remedies are available:

  • Damages or an account of the defendants profits

  • An order for the delivery up or the destruction of the infringing articles or products

  • An injunction

  • An enquiry to establish loss

The following defences are available?

The following can be used as defences against a claim of passing off:

  • The claimants mark, slogan etc is not distinctive

  • The mark, slogan etc has become generic

  • The defendant may be innocently using his or her own name

  • The claimant has given consent