Common Law of Passing Off

"Passing Off" means someone is using an unregistered Trade Mark to represent goods or services as their own i.e. representing a link to another business and thus riding off the back of the goodwill and reputation of that business.

As such, the offence of Passing Off prevents one party using the reputation and "get-up" of another party's business and passing their products or services off as those of the other party. The 3 elements which must be satisfied to prove Passing Off are as follows:-

1. one party has goodwill or reputation in the logo or design which they claim the other party is passing off as their own;
2. there is a misrepresentation to the public whether intentional or not i.e. use of an identical or similar logo or design;  and
3. damage could be or has been caused i.e. loss of trade in that the other business is taking customers which would have come to the business which is being 'passed off'.

Generally, 5 years use of a logo or design is required in order for goodwill to be established. However, if a logo or design "takes off" and becomes well known very quickly, requisite goodwill can be established on a shorter period of use.

Using the ™ symbol next to an unregistered Trade Mark indicates that the mark is being used as a mark of trade (or 'trade mark') even though it is not registered as a Trade Mark. This acts as a warning to potential infringers that the owner of the mark will be litigious should the same be used.

For more information and help on any of these topics please contact our Business Services Team on 01908 660966 or fill out our online contact form.