Passing off- Evidence Required
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Written on 08 March 2014
Passing off is a tortuous action taken when a competing company uses
the goodwill and reputation of another to gain an unfair commercial
To succeed in a claim of passing off you must show that there has been
a misrepresentation to the public that is likely to cause confusion
over the origin of the goods. What does this mean in real terms?
A Mark needs to be shown as distinctive to set it apart from other
goods and services, the more generic the term, the harder it is to
prove distinctiveness. On top of this a substantial number of consumers
must be deceived (Norman Kark Publications v. Oldham’s Press Ltd 
1 W.L.R. 380) but the likelihood of confusion need not be so high as to
be required to place the objects side by side and compare every single
difference and similarity (Seixo v Provezende (1865-66) LR 1 Ch App 192)
A court will need to see evidence that your company has been trading
for a long period of time and therefore gained goodwill over the years.
To prove this a simple printout from companies house will show when
your company was registered and when the infringing company was
registered. A Website or online presence will also be of aid in this
claim, as this will show a presence to the public of being able to
purchase the item and dates of how long the goods have been on offer.
A great way to show reputation and goodwill is by letters of businesses
recommending your product or stating how much they like your product.
In terms of websites many customers leave reviews of the product for
others thinking of purchasing the product to sway their judgment.
To show Misrepresentation is a difficult matter, to succeed it must be
proved that the offending product is likely to confuse a substantial
part of the public. A letter from a previous customer stating that they
were confused by the two products and they believed that the infringing
product was one that belonged to you. Relevant advertising and
packaging statements of the infringing product will be invaluable, as
this may indication a misrepresentation to the public. Photographic
evidence of the products and usage i.e. on the shelf of a shop will aid
in showing similarities and likelihood of confusion to the public.
In recent cases, the allowance of surveys of public confusion has come
under fire. It would seem that a public survey is not a piece of
admissible evidence to the court (Interflora v Marks & Spencer
 EWHC 273 (Ch)) and later reinforced in Zee Entertainment
Enterprises Ltd and other companies v Zeebox Ltd  All ER (D) 263
If you can prove all of the required evidence and prove that
infringing product is trying to confuse the public and gain an unfair
commercial advantage then you will succeed in passing off.
Written by Michael Coyle
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
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Article Published/Sorted/Amended on Scopulus 2014-03-24 13:06:46 in Legal Articles
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