What is Passing Off?
The principles of the tort of passing off date back to the 1842 case of Perry v Truefitt namely that, “A man is not to sell his own goods under the pretence that they are the goods of another man”.
Passing off is similar to trade mark infringement, but applies to protect unregistered rights associated with a particular business, its goods or services. Passing off actions can be brought in a wide range of situations, including to protect business names and features of “get-up” or “trade dress”.
In each case of passing off, the major issue is the danger of misrepresentation as to the origin of goods or services. If someone leads consumers to believe that their goods or services are connected with another business when they are not, they may give the other business grounds to sue for passing off.
Passing off claims can, however, be difficult to prove because claimants need to demonstrate that at least some of the public are at risk of confusion between the two businesses. Also it is not always easy to show that a misrepresentation has been made. For example, if someone advertises their toy shop business as “the Rolls Royce of toy stores” they may well be infringing Rolls Royce’s trademarks but it is highly unlikely a court would find that they were passing themselves off as connected to Rolls Royce in a business sense. There is after all little correlation between a toy store and a luxury car brand.
Is there a difference between trademark infringement and passing off?
Passing off and trade mark infringement can be poles apart. The key difference is that trade mark infringement deals with registered rights, and passing off with unregistered rights.
Passing off protects traders’ goodwill in relation to their goods and services. Goodwill in these circumstances is the brand reputation which is built-up in relation to specific goods or services and which attracts customers. It can be held by an individual trader or in some cases shared, such as between all the producers of a specific product in a specific area.
Sometimes the same facts give rise to claims for both trade mark infringement and passing off.
For further information on intellectual property protection or claims why not contact one of Alexander JLO’s team of specialist commercial lawyers and see what we can do for you?