Passing off: definition, remedies and defences
In the UK, businesses can use common law rights to protect their names, signs, slogans or trade marks against passing off.
What is passing off?
Passing off happens when someone deliberately or unintentionally passes off their goods or services as those belonging to another party. This action of misrepresentation often damages the goodwill of a person or business, causing financial or reputational damage.
In addition to straight passing off, there can also be:
- extended passing off - where misrepresentation of a particular quality of a product or service causes harm to another's goodwill
- reverse passing off - where a trader markets another business' goods or services as being his own
Raising an action of passing off can help you to prevent other people from using the goodwill associated with your business for their own benefit.
Elements of passing off
To establish a claim for passing off, you must meet three key requirements:
- Goodwill - you must prove that you own a 'reputation' in the mark that the public associates with your specific product or service.
- Misrepresentation - you must show that the trader has caused confusion and deceived or misled the customers into believing that their goods and services are actually yours.
- Damage - you must prove that the misrepresentation damaged or is likely to damage your goodwill, or cause actual or foreseeable financial or reputational loss.
Rights relating to passing off are established gradually with use. Goodwill in a mark can be particularly difficult to define. The reputation and goodwill of a business are generally considered as something that provides an identity to a business and its goods or services, and distinguishes them from those of its competitors.
Remedies for passing off
If you are successful in a passing off claim, there are several remedies available. You can:
- apply for an injunction to prevent the business from using your trade mark or goodwill
- apply to have the infringing goods destroyed
- sue for damages or seek account for lost profit
- request an inquiry to establish loss
Passing off defences
You may encounter different defences if you pursue a claim for passing off. For example, the defendant may argue that:
- the mark in question is not distinctive
- the mark is generic
- they have used carefully and honestly their own name
- you don't have goodwill in the mark
- you have given consent or encouraged the use of the mark
- you can't demonstrate damage or loss
The law on passing off is complicated. Claims can be hard to prove and taking action can be expensive, as the evidential burden of proof is solely on the trade mark owner.
If you suspect passing off or infringement, seek advice from qualified professionals experienced in trade mark law.
While passing off most commonly applies to unregistered trade marks, it may also relate to registered trade marks.