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“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:-
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.
Common law is a system of law based on court decisions rather than laws made by the parliament. It’s known as ‘judge-made’ law and is guided by the principle of ‘precedent’, meaning that previous court decisions are considered when making rulings in similar cases.
Passing off is a common law offence, which can be used to enforce unregistered trade mark rights. It protects the goodwill of a trader from misrepresentation.
Infringement occurs when a business misrepresents their goods or services as being the goods or services of another business, causing damage. This could be through the use of a similar name, logo, or other branding elements.
The test for passing off involves three elements: Goodwill owned by a trader, misrepresentation and damage to the goodwill. All three elements must be proven for a successful claim. For example, in the case of Reckitt & Colman Ltd v Borden Inc, it was established that the defendant’s lemon-shaped container for lemon juice was misrepresenting the public into believing it was the claimant’s product, causing damage to the claimant’s goodwill.
Remedies may include damages or an account of profits, delivery up or destruction of the infringing items, and injunctions to prevent future infringement.
Yes, the law of passing off can provide protection for unregistered rights, including trade names, logos, and packaging. However, it might be harder to prove your case compared to a registered trade mark infringement claim.
The UK Intellectual Property Office provides resources on intellectual property rights, including passing off. For case-specific advice, consult with a legal professional.
If you have any questions about intellectual property law, please don’t hesitate to contact our team of experts who are on hand and ready to help you.
