Passing Off in Intellectual Property
What is passing off in intellectual property?
“Passing off” is a legal concept in intellectual property law in the United Kingdom. It refers to a legal action that may be taken against a person or party who misrepresents their business and its goods, products or services as those of another.
In passing off cases, the claimant (usually a business or individual) asserts that they have built up a reputation or goodwill in connection with their goods or services. Passing off occurs when someone is using a similar mark, name, or get-up (appearance) in a way that is likely to confuse consumers into thinking they are associated with or endorsed by the claimant.
Making a claim for passing off in intellectual property
Passing off protects businesses from suffering financial loss due to the misrepresentation of another under common law.
To establish a passing off claim, a claimant typically needs to demonstrate three key elements:
- Reputation and goodwill of a business: The claimant must show that they have a significant reputation or goodwill associated with their goods, services, or business.
- Misrepresentation: The claimant must demonstrate that the defendant is making a misrepresentation, which can include using a similar trade mark, trade name, or get-up that is likely to confuse consumers.
- Establish a loss: The claimant must prove that they have suffered or are likely to suffer damage as a result of the defendant’s passing off actions.
Passing off cases are often brought in situations where there may not be registered trade marks involved, but where there is still a legitimate concern about potential consumer confusion or damage to an established business’s reputation.
Passing off and trade mark infringement
It’s worth noting that passing off is different from trade mark infringement, which involves the unauthorised use of a registered trademark. Passing off can apply even if there is no registered trademark, as it is based on the principle of protecting goodwill in business.
- Passing Off: Passing off is a common law tort, which means it is primarily based on judge-made law and precedents. It doesn’t require registration and protects unregistered trademarks, trade names, and goodwill associated with a business.
- Trademark Infringement: Trademark infringement, on the other hand, is a statutory offense. It involves the unauthorised use of a registered trademark (or a substantially similar mark) that is protected by law. It is based on the specific laws and regulations governing trademarks. A claim for trade mark infringement can be made in these circumstances instead.
Remedies for passing off in intellectual property
In a passing off case, if the claimant is successful in proving the action amounted to passing off, the court may grant various remedies to address the harm caused by the defendant’s actions. These remedies are designed to protect the claimant’s goodwill and reputation. The specific remedies can include:
- Injunction: This is a court order that requires the defendant to stop using the infringing mark or engaging in the passing off activity. An injunction can be temporary (interim) or permanent.
- Damages: The claimant may be awarded monetary compensation for any actual losses suffered due to the passing off. The damages awarded are intended to put the claimant in the position they would have been in had the passing off not occurred.
- Account of Profits: In some cases, the court may order the defendant to account for any profits they made as a result of the passing off. This means the defendant may be required to surrender the profits they earned through their wrongful actions.
- Delivery Up or Destruction of Infringing Articles: The court may order the defendant to surrender any goods, packaging, or materials bearing the infringing mark for destruction or other appropriate disposition.
- Corrective Advertising or Publication: In certain cases, the court may order the defendant to issue corrective statements or engage in advertising to rectify the confusion caused by the passing off.
- Public Declaration or Apology: The court may require the defendant to publicly acknowledge their wrongful actions and apologise for any harm caused.
- Preservation of Evidence: The court may issue orders to preserve relevant evidence, ensuring that important information is not destroyed or altered.
It’s important to note that the specific remedies granted can vary depending on the circumstances of each case, the jurisdiction, and the discretion of the court. The aim of these remedies is to provide fair and just compensation to the claimant and to deter the defendant from engaging in passing off activities in the future.
Defending a passing off case
Defences to a passing off claim may include various legal arguments that the defendant can use to counter the claimant’s case. It’s important to note that each case is unique, and the applicability of defences depends on the specific circumstances. Here are some common defences to passing off in England:
- No Misrepresentation or Likelihood of Confusion: The defendant may argue that there was no misrepresentation or likelihood of confusion between their goods or services and those of the claimant.
- Lack of Goodwill or Reputation: The defendant may claim that the claimant has not established a significant reputation or goodwill associated with their goods or services.
- Consent: If the claimant gave explicit permission or consent for the defendant to use the mark, name, or get-up in question, this may serve as a defence.
- Generic or Descriptive Use: The defendant may argue that the elements they are using (such as a common term, description, or generic name) are not distinctive enough to be associated exclusively with the claimant.
- Honest Concurrent Use: The defendant may be able to demonstrate that they have been using the mark in good faith alongside the claimant for an extended period without causing confusion.
- Prior Use: The defendant may assert that they have been using the mark, name, or get-up in question before the claimant and thus have prior rights to it.
- Abandonment or Non-Use by the Claimant: If the claimant has not actively used the mark or maintained their goodwill, the defendant may argue that any rights they had in the mark have been abandoned.
- Statute of Limitations: In England, there is a time limit within which a passing off claim must be brought. The defendant may raise this defence if the claimant has delayed unreasonably in bringing the action.
- Unclean Hands: If the claimant has engaged in improper conduct or has themselves acted in a way that undermines their claim, the defendant may argue that the claimant has “unclean hands” and should not be entitled to relief.
- Fair Use or Comparative Advertising: Using another’s mark for the purpose of fair comparison or to provide information about goods or services may be a valid defence.
- Acquiescence: If the claimant knew about the defendant’s use of the mark for an extended period and did not take action, they may be considered to have acquiesced to the use.
How can Expert Commercial Law assist?
Expert Commercial Law can assist on your passing off in intellectual property case by connecting you with an experienced intellectual property solicitor from our panel.
All of the e solicitors on our panel have the experience and expertise required to take on your case. Each solicitor is vetted before being allowed onto our panel and we only select the best in the business. All of our solicitor firms are authorised and regulated by the Solicitors Regulation Authority (SRA).
The solicitors on our panel can provide quality legal advice throughout your claim to help you achieve the best outcome possible. .
Please note we are not a firm of solicitors; however, we maintain a panel of trusted and regulated legal experts. If you contact us in relation to an injunction query or a commercial law case, we will pass your case on to a panel firm in return for a fee from our panel firms. We will never charge you for passing your case to a panel firm.
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Please note, we are not a firm of solicitors; however, we maintain a panel of trusted and regulated legal experts. If you contact us in relation to a commercial law case, we will pass your case onto a panel firm in return for a fee from our panel firms. We will never charge you for passing on your case to a panel firm.