Passing off

What is passing off?

Passing off is similar to trade mark infringement, but applies to protect unregistered rights associated with a particular business, its goods or services. Passing off actions can be brought in a wide range of situations, including to protect business names and features of “get-up” or “trade dress”.

The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842)).

In each case of passing off, the key issue is the danger of misrepresentation as to the origin of goods or services. If someone leads consumers to believe that their goods or services are connected with another business when they are not, they may give the other business grounds to sue for passing off.

Passing off claims can be difficult to prove because claimants need to demonstrate that at least some of the public are at risk of confusion between the two businesses. Also it is not always easy to show that a misrepresentation has been made. For example, if someone advertises their fast food business as “the Rolls-Royce of chip shops” they may well be infringing Rolls-Royce’s trade marks but it is highly unlikely a court would find that they were passing themselves off as connected to Rolls-Royce in a business sense.

What is the difference between trade mark infringement and passing off?

Passing off and trade mark infringement can be poles apart. The key difference is that trade mark infringement deals with registered rights, and passing off with unregistered rights.

Passing off protects traders’ goodwill in relation to their goods and services. “Goodwill” is the brand reputation which is built-up in relation to specific goods or services and which attracts customers. It can be held by an individual trader or in some cases shared, such as between all the producers of a specific product in a specific areas.

Spanish sherry makers, French champagne houses and Parma ham producers have each won passing off cases which prevent people from outside the relevant areas and/or not using traditional techniques using terms such as “sherry”, “methode champenoise” and “prosciutto di Parma”.

Sometimes the same facts give rise to claims for both trade mark infringement and passing off.

Our passing off services

Passing off claims can be challenging and expensive to fight. It may be necessary to arrange market research surveys in order to demonstrate whether the claimant has a reputation in specific features of goods or services. Our team of expert solicitors can work with you to ensure the best outcome possible and we can support your business by:

• Taking action on your behalf if you think you may have a passing off claim
• Acting to defend you if accused of passing off
• Using alternative dispute resolution strategies such as mediation to resolve conflicts between businesses over branding.

Contact an intellectual property lawyer

Our lawyers are always happy to have a free initial chat. If you would like to find out more about how intellectual property advice can support your business, you can contact Roy Crozier or Susan Hall directly using the details given on their profile pages, or by calling 0800 652 8025.

Clarke Willmott has offices in Birmingham, Bristol, Cardiff, London, Manchester, Southampton and Taunton and we provide IP advice both to clients located within the UK and around the world.