Yes, there is a difference between passing off and trade mark infringement. The best to start is to tell you what passing off is.
Passing off is tort law – which is a civil wrong that causes someone else to suffer loss or harm.
In the case of passing off, a rather long-winded definition by Lord Diplock outlines five essential requirements:
- A misrepresentation
- Made by a trader in the course of trade
- To prospective customers of his or ultimate consumers of goods or services supplied by him,
- Which is calculated to injure the business or goodwill of another trader, and
- Which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so
Isn’t that the same as trade mark infringement?
No, it’s not.
Trade mark infringement deals with registered rights. Passing off deals with unregistered rights.
Using a logo, tagline, or similar element that closely resembles an existing registered trade mark is seen as committing trade mark infringement.
OK, so how is that different from passing off?
Common law governs passing off. Unlike trade mark infringement, there is no specific legislation to offer protection.
As the case law currently stands, proving passing off relies on the presence of these three elements:
- That you possess goodwill in your goods, name, mark, or other identifying feature, that associates the public with those specific goods (and distinguishes them from others)
- There must be a misrepresentation by the other party which has led others to believe the goods are yours
- The misrepresentation has caused damage to your goodwill
As you have probably guessed, proving passing off isn’t as cut and dried as trade mark infringement, which leads us to our next point.
Does that mean I should register my trade mark?
If you want statutory protection for your exclusive rights with regards to your trade mark, registration is a no-brainer. That’s why it is better to do it straightaway – don’t wait.
Relying on passing off as your only protection is a gamble. Although it provides a certain level of security to your intellectual property rights, as a common law remedy, it’s much harder and very expensive to prove in court.
Not only do you have to prove presumption of misrepresentation among the general public, but you also have to show deception of the public and injury to your goodwill.
Our advice is to register your trademark from the outset.
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Dawn Dowds, Celebrated Ltd