Passing Off in Intellectual Property

What is passing off in intellectual property?

“Passing off” is a legal concept in intellectual property law in England and Wales. 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.

Several types of passing off can be identified, which reflect the broad scope of protection offered under passing off law in England and Wales:

Classic Passing Off

This is the most common form of passing off. It involves a direct misrepresentation that causes confusion between the claimant’s and defendant’s goods or services. It directly relates to the classic trinity requirements.

A case law example of this can be seen in the Jif Lemon case. In this case, it was determined that duplicating a lemon-shaped container for lemon flavouring constituted passing off due to the established reputation and goodwill associated with the Jif lemon container’s shape.

Reverse Passing Off

Reverse passing off occurs when the defendant sells the claimant’s goods or services under the defendant’s name or mark. Essentially, the defendant tries to pass off the claimant’s products as their own. This denies the claimant the credit for the quality of the goods or services.

Extended Passing Off

Extended passing off applies to situations where the misrepresentation involves a broader class of goods or services. It is often related to collective goodwill owned by a group of traders. An example includes the misuse of geographical indications, where products from a particular region are known for their specific quality or reputation (e.g., Champagne, Scotch Whisky).

Get-up

This specific category focuses on the packaging, presentation, or physical appearance of goods, which consumers associate with a particular source. Misuse of a distinctive get-up that leads to consumer confusion can constitute passing off.

False endorsement

This specific type of passing off occurs when a defendant’s actions suggest that their goods or services are endorsed, recommended, or approved by a well-known brand, celebrity, or public figure without such endorsement being true.

The implication of endorsement or approval by a third party, particularly someone famous or with a substantial reputation, can significantly influence consumer choices and perceptions, making false endorsement a serious concern for both individuals and companies whose names or likenesses are misappropriated.

Making a claim for passing off in intellectual property

Passing off claims protect businesses from suffering financial loss due to the misrepresentation of another under common law.

To prove passing off, 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 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.

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. .

Our solicitors also help with commercial claims, such as breach of contract, partnership disputes, fraud claims restrictive covenants and CCJ removal.

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.