Passing Off and Trademark Law

A cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a mark which is considered to be similar to another party’s registered or unregistered trademarks, particularly where an action for trademark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trademark and the unregistered mark). Passing off is a form of common law, whereas statutory law as such provides for enforcement of registered trademarks through infringement proceedings.

Passing off and the law of registered trademarks deal with overlapping factual situations, but deal with them in different ways. Passing off does not confer monopoly rights to any names, marks, get-up or other indicia. It does not recognize them as property in its own right.

Instead, the law of passing off is designed to prevent misrepresentation in the course of trade to the public, for example, that there is some sort of association between the businesses of two traders.

One early example of its application by the United Kingdom Intellectual Property Office can be found in a Trade Mark Opposition Decision in 2001. It was held that two brands of confectionery both named “Refreshers”, one made by Swizzels Matlow and one by Trebor Bassett, which had coexisted since the 1930s, would deceive a consumer as to their source for some items but not for others. Both coexist in the marketplace.

Required elements

When coming to Court, there are three elements, often referred to as the Classic Trinity, in the tort which must be fulfilled.

1. Goodwill owned by a trader

2. Misrepresentation

3. Damage to goodwill

The plaintiff has the burden of proving goodwill in its goods or services, get-up of goods, brand, mark or the thing standing for itself.

The plaintiff also has the burden of proof to show false representation (intentional or otherwise) to the public to have them believe that goods/services of the defendant are that of the Plaintiff. There must be some connection between the plaintiff’s and defendant’s goods, services or trade. They must show likelihood or actual deception or confusion by the public. Deception or confusion, however, does not consider a “moron in a hurry”.

It is the Court’s duty to decide similarity or identity of the marks, goods or services. The criteria are often: aural, visual and conceptual similarity (often applied in trademarks infringement cases).

For the element of damage to goodwill, there may be a loss or diversion of trade or dilution of goodwill. The plaintiff need not prove actual or special damage; real and tangible probability of damage is sufficient. This damage should however be reasonably foreseeable. It is not enough just to show likelihood or actual deception or confusion.

Ultimately, the Court must use common sense in determining the case, based on evidence and judicial discretion, and not witnesses.

Disclaimers may not be enough to avoid passing off or cause of action