Passing Off

The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man”. Broadly speaking, the cause of action protects a business against unfair competition where another business seeks to take advantage of the reputation and goodwill that has been established in a brand.

For a business name to be capable of protection by an action in the tort of passing off, the claimant must demonstrate that the public recognise the name, mark or get-up as denoting the quality or character of their goods.

Generally speaking, there is a three part test for a claimant to establish a claim in the tort of passing off.

  1. Goodwill – The claimant must have goodwill which is related to the goods sold or services supplied.
  2. Misrepresentation – The claimant must demonstrate that the defendant has made a misrepresentation to the public (whether or not it is intentional) which is likely to lead to confusion in the mind of the public that the goods or services offered are the goods or services of the claimant.
  3. Damage – The claimant must show that they have suffered damage or there is a real likelihood of damage, either as a loss of profit or loss of reputation, as a result of the misrepresentation.

Remedies for passing off can include:

  • An interim injunction
  • Search and seizure orders
  • Damages
  • Account of profits
  • Delivery up or destruction of the infringing goods

The tort of passing off is an important cause of action for the protection of a brand and the hard-earned reputation of a business. Our intellectual property solicitors have pursued and defended a number of claims in the tort of passing off on behalf of companies and traders with unregistered trade marks and other unregistered intellectual property rights.