Passing off – should it be relied on?

The simple answer to that is no.

It’s a law that relates to unregistered trade marks and exists to prevent someone ‘passing off’ their products or services as being yours.

The word ‘law’ in that sentence probably makes you think, ‘that’s Ok then, it’s a law so it will protect me. Why should I pay out for trade mark registration when I don’t need to?

But did you know that passing off is a common law?

That means it has come about through case law and not legislation.

Why is that a bad thing? Well, in short it that means that passing off is extremely difficult and costly to prove. That’s why you should never rely on it to protect your brand.

The only way you can be sure you have statutory protection is by registering your trade mark. That means you can then sue someone for trade mark infringement.

Passing off as the case law currently stands

To prove passing off, you must be able to prove:

  1. 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)
  2. There has been a misrepresentation by another party, which has led others to believe the goods are yours
  3. The misrepresentation has caused damage to your goodwill

Passing off claims are notoriously difficult to prove. You have to be able to show that at least some of the public are at risk of confusion between your business and the one that’s ‘passing off’ as you. This rather long definition by Lord Diplock illustrates this point perfectly:

[Passing off is] 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.”

It’s not always easy to show when a misrepresentation occurs. Let’s say you create stained glass windows. You advertise them as “the Rolls-Royce of stained glass windows.” Your claim could be argued as infringing Rolls-Royce’s trade marks. However, it’s unlikely a court will find that you were passing yourself off as being connected to Rolls-Royce in a business sense.

Register your trade mark for full protection

If you want cast-iron, statutory protection for your brand, register your trade mark. And make sure you do it immediately.

Relying on passing off is basically akin to gambling with your business.

You’ll have to prove not only the presumption of misrepresentation among the general public, you’ll also have to show deception of the public and injury to your goodwill.

You’ve spent many years and a lot of money to build your brand, do you really want to risk it all for the sake of saving a few pounds?

Yes, it costs money to register your trade mark but it’s a no-brainer – just like insuring your home, contents, and cars.

Our advice is to get your trade mark registered from the outset and take away the uncertainty.

Free Guide: Everything A Business Owner Needs To Know About Trade Marks

The guide will explain to you in detail the essentials of trade mark protection including:-

  • Choosing a distinctive brand name – why a good choice will resonate with your customers and reduce your advertising and marketing spend.
  • The importance of avoiding the descriptive/ generic trade mark trap.
  • The importance of pre-filing searches – done the correct way – to avoid future legal action against you and the risk of having to rebrand.
  • Strategy on when to time your application.
  • Realising the value of your trade mark – why your trade mark is considered an asset on your balance sheet.
  • The importance of maintaining and enforcing your registered trade mark rights once your mark is registered.

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Free Guide: Everything A Business Owner Needs To Know About Trade Marks