Ipswich Solicitors

Passing off – what is it ?

Passing off is about stopping the infringer from selling goods or services by making unfair use of the claimant’s business reputation. Typically, passing off cases concern the cases in relation to names, packaging, slogans where the infringer accrues some form of goodwill.

There is no legal definition for the test for passing-off but in order to it the three elements must be present:

1.            Goodwill

2.            Misrepresentation, leading to confusion; and

3.            Damage

•             Goodwill is the business reputation. In order for the test to apply, the goods or services concerned must have goodwill attached to them. The reputation must be among customers and relating to some distinguishing feature. The features must be associated with those particular goods or services.

•             There must be a misrepresentation made by the defendant in the course of trade that will lead to confusion of customers that the goods offered by him are in fact the goods or services of the other company. The misrepresentation need not be intended.

•             A passing-off case will only succeed if the claimant can show damage, or the likelihood of damage i.e. loss of profit or loss of reputation.

There are a number of defences to passing off, such as:

•             The mark or slogan is not distinctive

•             Defendant’s or claimant’s use otherwise than in trade

•             No prove of damage

•             Claimant has no goodwill over the goods

•             Careful and honest use of defendant’s own name

•             Defendant was given consent

Remedies for passing off:

•             Damages

•             An account of profits

•             An injunction

•             Declaration as to rights

•             An order for delivery up or  destruction

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