9th Nov 2021

What is Passing Off? A whistle stop guide

“A man is not to sell his own goods under the pretence that they are the goods of another man”*

A little archaic in its use of ‘man’ (it was said in 1842!) but the principle is still very much applicable law and is essentially what we refer to as ‘passing off’.  Where a business passes off and sells goods as if they were the goods of another.  Passing off can cover registered trade marks, unregistered marks and names.

In its simplest form you need the following elements for a passing of claim to be successful:

  • Reputation that is reputation or goodwill associated with your goods or services, it’s what attracts your customers.    
  • Misrepresentation – that the offending business has misrepresented the public in causing or likely to cause them to believe that the goods or services are yours.  This does not need to be intentional.  The test the courts apply here is whether the public would be confused or deceived by the offending business’ misrepresentation.     
  • Damage – due to the public’s belief that the goods or services are yours or the same as yours.  A claim for passing off will not succeed unless the business has suffered damage.  Most commonly this is through the diversion of sales i.e. customers bought from the offending business rather than you, but it can take other forms such as damage to reputation, erosion of goodwill or even the loss of an opportunity to expand. 

Trade mark infringement

When dealing with an actual registered trade mark then, the Trade Marks Act 1994 is also applicable.  As a trade mark owner you have exclusive rights to that registered mark and in broad terms those rights are infringed if the mark is used without your permission.

If another business is therefore using your registered trade mark, you are likely to have a claim for both passing off and trade mark infringement.

In practical terms

If you believe that another business is using your name, mark or registered trade mark then you need to take prompt action to avoid any argument that you have accepted the situation.  The offending business needs to be warned and told to stop (often referred to as a ‘cease and desist’ letter) and depending upon the severity of their actions you may have a claim for damages too.

This can be a complex area of law and we would always recommend that you speak with your legal advisor before commencing action.  They will be able to advise you on the strength of your position and also the various remedies that may be available to you which can include obtaining an injunction, delivery up or destruction of any offending articles, payment of damages or an account of any profits made by the offending business.

* Perry v Truefitt (1842) 5 Beav.66 at 73

If any of the issues raised in this article are affecting you, or if you seek advice on any of the above, Berwins are here to help. To get in touch, simply email Natasha Guest at natashaguest@berwins.co.uk or call 01423 543141.

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