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An Overview of Passing Off


Lawdit Solicitors - Expert Author

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Released 12 September 2008

Passing off involves preventing an infringer from selling his goods or services by making unfair use of the claimant's reputation.

Usually, passing off cases involve the scenario of the infringer 'copying' the 'get-up' of the claimant's goods, for example, by copying their packaging and overall presentation as seen by the consumer. Passing off is often used as an additional remedy to trade mark infringement claims and may even succeed even if the trade mark claim does not.

Lord Halsbury in the case of Reddaway and Frank Reddaway & Co Ltd v Banham and George Banham & Co (1896) once said "nobody has any right to represent his goods as the goods of somebody else'. This quote sums up passing off. Of course, passing off also applies to services. The passing off must be in relation to a commercial activity, for example, in Kean v McGivan (1982) it was held that passing off did not apply to political party names.

The most well known passing off case is Reckitt & Coleman Products Ltd v Borden Inc and Others (1990). Here, the claimant (Reckitt) sold its product, 'Jif Lemon' i.e. lemon juice in plastic lemon packaging. The infringer also started selling its product in a similar shaped container. The claimant was successful in preventing the defendant from selling its products in the said packaging.

The three elements that a claimant must prove in a passing off action are 1) that the claimant owns goodwill or has reputation 2) the that infringer's activities are causing misrepresentation leading to confusion on the part of the public (i.e. that the goods / services are associated with those of the claimant's) 3) that damage is likely to be caused, for example, a loss of profits.

Defences to passing off include: use of own name; use other than in the course of trade; claimant has no goodwill or reputation; claimant's acquiescence; or no provable loss to the claimant. If a claimant can prove passing off remedies include: an injunction; damages; an account of profits; an order to repackage; and order for delivery up or destruction of the offending products; declaration as to rights.

Corinne Day is a trainee solicitor who specialises in information technology law and intellectual property law.

About the Author

Lawdit 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 largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2008-09-15 21:00:33 in Legal Articles

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