What is passing off
Submit Articles Back to Articles
Released 8 September 2008
What is Passing Off?
The common law action of passing off can be used to protect registered and
unregistered trade marks in the UK; this enables the original user of the mark
to take action against others that may use it in the course of trade of their
goods or services without permission.
Even if you own a registered trade mark, a passing off action can be used
when the action of others does not amount to trademark infringement.
In order to succeed in a passing off action, you must establish:
(1) that you have goodwill;
(2) that your mark has been misrepresented;
(3) that damages have occurred due to this misrepresentation.
For goodwill to be established you must prove the reputation of your mark in
relation to the goods or services you provide. It is this that will bring in
custom to your business and establish your goods or services from that of a new
business. It must be proved that the customer makes a link between the mark or
name that you are defending, with the origin of the goods from your company.
An example of a successful passing off action is in the case of “Phones4u”.
They challenged a small phone company in London who set up the domain name “phone4u”
for their company. They succeeded as it was clear that this name was misleading
to customers who trusted the name of “Phones4u” and therefore took their
business to them.
To prove goodwill it must be clear that customers use or buy the product or
service due their reputation and not simply due to convenience, as shown in the
case above. Goodwill can be acquired through the use of words, signs, packaging
and advertising style.
To succeed in a passing off action the claimant must:
(1) be a trader;
(2) be trading.
The claimant must prove that they are engaged in commercial or business
activity. This is normally straight forward. However, a passing off action can
be rejected when there is a lack of business status.
Goodwill cannot be established before a company begins trade, this includes
the use of publicity or the intent to start trading. However, goodwill can
continue after a company stops trade. But there is ongoing debate as to how long
this goodwill is present.
Foreign traders can claim a passing off action, this can be through:
(1) evidence of business activity in the UK;
(2) customers in the UK without business activity;
(3) reputation of the company or mark in the UK;
(4) a well-known mark in the UK.
Once all elements of goodwill have been established, misrepresentation has
been shown and damage to the company is clear, a passing off action can be
taken. This will help protect the mark or name against similar problems in the
future that may occur.
This article has been written by Leonie Byers. Leonie is studying for a
degree in Law.
About the Author
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
Follow us @Scopulus_News
Article Published/Sorted/Amended on Scopulus 2008-09-15 21:00:33 in Legal Articles