It is often believed that the only way to effectively protect your company’s sign (name, slogan, logo, colour, shapes etc) is to obtain a trade mark registration. This might be true in most cases, but in others it is also or only possible to protect your sign through other intellectual property (IP) rights. Copyrights, unregistered designs and laws of unfair competition can potentially be used when another party is unlawfully using any of your signs.
In the UK, one form of protection that is often relied upon (sometimes in conjunction with claims for registered trade mark infringement) is the law of passing off, which is a common law right. Passing off is used to protect signs that cannot be registered for e.g. packaging, get-up or colours, or signs that have not been registered but have acquired goodwill.
So what is passing off?
Passing off is defined as making false representation which is likely to make customers believe that a company’s goods or services are those of another. Usually, this happens when someone has copied someone else’s sign e.g. packaging, slogan, trade name… without getting permission, and uses it in a way that creates confusion amongst the public.
What are the passing off requirements?
In order to prove passing off, you will have to fulfil three essential requirements which were set in the Jif Lemon case:
- Goodwill: you have to establish that your goods or services have acquired goodwill. There is no particular definition of goodwill in relation to passing off, however it has been described as “the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom”. Goodwill and reputation are often connected but goodwill should not be confused with reputation. Goodwill isn’t built only because you are reputable in the country, but also from actively selling your goods and/or services in the country to acquire goodwill.
- Misrepresentation: you have to demonstrate that the public has been led or will likely be led to believe that the goods and services provided by the defendant are yours or have some association/connection to yours. The fact that the defendant has intentionally used your goodwill or not is irrelevant.
- Damage: you have to establish that you have suffered or will likely to suffer damage due to the misrepresentation.
Each passing off action is determined on its own individual facts, but they all require the fulfilment of the three above elements. If you do not manage to provide enough evidence to fulfil one of those requirements, your passing off claim will fail.
It is important to be aware of the fact that there exists an extended form of passing off which was established in the Advocaat case. In that case, five characteristics need to be present to bring a valid action for passing off in the extended form. Due to the relevancy of this article, this will not be explored in details but you can visit this link to see if this form of passing off applies to you.
Who may use passing off?
You may assume that passing off can only be relied on by big established businesses, but that is not the case . Small and medium businesses should explore the possibility of seeking legal actions based on passing off. Such actions may be brought by any traders who can prove the existence of the three requirements mentioned: goodwill, misrepresentation and damage. The tricky part for the trader is to have enough evidence to show sufficient goodwill in a certain location or among a group of customers in the UK.
When use passing off?
Trade mark registrations are highly recommended to protect your brands, because generally it will be easier and be less costly to sue an infringer. However, when you cannot rely on a trade mark registration, passing off actions should always be considered.
Moreover, it provides protection for signs which have not been registered formally or which cannot get registered (some signs are not in compliance with trade mark law for e.g. descriptive marks or get-up). As explained above, you may rely on the law of passing off for any signs or characteristics recognised by the public as being associated with any goods and services. If you believe you can prove the existence of the three elements of passing off, you should make a claim on that basis.
The downside of passing off
We have established that passing off actions should always be considered when facing unlawful use of your brand, especially when you have no registered rights. However, you have to be aware that passing off actions have to be brought before British courts, and this is very costly and time consuming. This is because a high amount of evidence has to be presented to prove passing off. When you are a small or medium sized business, this can be very damaging and often leave you defenseless. That is why, it is important to also register your trade mark and/or design when possible, to consider all your options and never exclude other actions that could be taken.
Should you need assistance in bringing an action of passing off or any other intellectual property matters, our legal experts are available anytime Monday to Friday 9am-5pm to discuss this further.