Passing off occurs where someone in the course of trade creates an impression that their goods or services emanate from that of another business.
- Passing off is aimed at preventing customer confusion as this could lead them into buying goods or services under the false impression that originate from another business.
- Usually a passing off action arises where the branding of a business is copied, although it can encompass more general attempts to replicate another business.
Do I really need to register a trademark?
Although passing off provides some protection against unauthorized use of existing business names where they have not been registered as trademarks, your remedies are much better if you can also argue that your trademark has been infringed. This involves having a registered trademark .
So, in practice it tends to be much easier and cheaper to take action to stop other businesses from using your name or other branding if you have registered a trademark.
If you have not registered a trademark the law of passing off is your only recourse.
Proving Passing Off
In a passing off litigation action it is necessary to establish that:
- You have ‘goodwill’ in the name or logo – that is, you have built up a reputation in the mark
- A third party has made use of your branding in such a way that consumers would be led into believing that the other party’s goods or services were those of your business
- You have been harmed in some way by the other person’s use of the mark
These three factors can be difficult and expensive to prove and specialist legal advice is usually essential.