The law of passing off exists in order to prevent a business from misrepresenting its goods or services as being, or having an association with, the goods or services of another business. Whilst action for trade mark infringement can be taken where a trade mark has been registered, the law of passing off aims to protect unregistered rights that are associated with a business and its goods or services.
Proving a Passing Off Claim
Businesses will need to carefully review the position before bringing a passing off claim. This is because there are 3 essential elements to a claim, including:
- There must be ‘goodwill’ or reputation attached to the goods or services that the Claimant is seeking to protect.
- There must be a misrepresentation by the Defendant to the public that has led to or is likely to lead the public to believe that the goods or services offered by the Defendant are the goods or services of the Claimant.
- There must be damage to the Claimant as a result of that misrepresentation.
Goodwill is essentially the reputation that has been built up in respect of a particular business’s goods or services and which attracts customers. The geographical extent of any goodwill will be considered by the court. The misrepresentation does not need to be intentional but a Claimant will need to prove that some members of the public are likely to be confused. It will also be necessary to prove that some damage has been suffered as a result of the misrepresentation.
If you are a Claimant or a Defendant in potential passing off proceedings, we are able to review the facts of the case with you and advise you of your options including early alternative dispute resolution in appropriate cases.