What is passing off in IP law?

 

Although even small businesses can benefit from registering their trademarks, many choose not to. The common law offers them some protection in the form of prohibiting others from passing off their products as those of someone else’s.

Protecting good will

A business is recognisable for many reasons. It may have a distinctive name, livery, logo or colour scheme. If the business does well, its customers will come to associate these characteristics with good quality products. This is known as good will.

It is valuable, and like all valuable commodities, it is vulnerable to theft.

A new business may seek to trade on the good will an existing business has by copying its branding, perhaps with slight differences. In order to protect customers from inferior products and to encourage businesses to pursue their good will, the law does not permit this.

Businesses who are the victims of passing off may well have a viable claim against the new business.

What are the legal principles

Starting a claim for passing off does not require the business to have registered any of its branding as trademarks. Nor is there is no time limit for how long a business has the exclusive rights to its branding.

However, there are some criteria that must be fulfilled before a claim can be successful.

The business must prove they have strong good will in the first place and they must show that this has been damaged. New businesses are therefore highly unlikely to be able to bring a claim for passing off since they are unlikely to have amassed the necessary reputation.

The trademark must also be in current use and must not have arisen concurrently.

Many of these criteria do not apply to registered trademarks and you can learn more about protecting your brand by visiting our trademarks page.

Compensation and remedies

The remedies available for someone who succeeds in a passing off claim include:

  • Injunctions to stop the offender from using the trademark
  • Damages to make up for direct loss of business
  • An account of profits from the defendant
  • An order from the courts to force the defendant to differentiate their offending items

Legal advice should be obtained for clarification on whether you have a claim against someone for passing off, or alternatively whether someone has a potential claim against you.

We work with hundreds of intellectual property solicitors around the country, and if you would like to obtain legal advice on trademarks or passing off then we can get you great legal help. Please call us on 0800 1777 162 or complete the web-form above to speak to one of our advisors.

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