Passing off - never being boring

In this post we give a brief thumbnail of the law of passing off and some practical pointers (inspired by the Pet Shop Boys) on how to prevent it.

[caption id="attachment_6691" align="alignleft" width="240"]© Antonis Lamnatos © Antonis Lamnatos[/caption]


What is passing off in a nutshell?

The law of passing off prevents someone representing (or 'passing off') their products or services as being those of someone else, usually a more established brand. Typically a claim in passing off arises when someone has copied the claimant's packaging although there are plenty of other scenarios such as implying celebrity endorsement. Passing off is a common law right which means it has arisen under case law rather than legislation.

How do I prove passing off?

The famous Jif Lemon case sets out the three essential elements of a passing off case:

  • the claimant's goods or services have acquired goodwill--goodwill is difficult to define but 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'
  • there has been a misrepresentation eg an advertisement, use of packaging by another party that has led consumers to think that the goods or services came from the claimant
  • damage has resulted or is likely to result from the misrepresentation.

Can small, local businesses rely on passing off or is it just for big established brands?

The law of passing off does not exclusively serve big brands that have invested millions in their marketing. Many passing off cases involve small, local or niche businesses. The challenge is to establish goodwill in the specific location or among a particular type of customer. For example, a small clothes shop in a London Borough called Chelsea Man Menswear was able to show local goodwill (based on customer recognition in the area, years trading, etc) and based on that goodwill brought a successful action against high street chain 'Chelsea Girl'. Conversely, a small business may operate across the UK but only have a small number of customers for its niche products eg handmade soaps. This type of business might be able to bring a passing off claim if it could show sufficient goodwill among people who buy handmade soaps.

I've registered trade marks for my name and logo--isn't that sufficient to protect my brand?

It is best practice to register names and logos as trade marks where possible because trade mark infringement is generally far simpler to prove and costs of litigation are usually lower than passing off. However a passing off action can succeed where a trade mark infringement claim fails if, for example, the actual trade mark has not been copied. Certain aspects of a brand eg shape and colour are difficult to register as trade marks yet it is these elements that might be copied rather than the name or logo. The Jif Lemon case was about the use of a lemon shaped bottle for lemon juice. Even though the defendant did not use the Jif name, it did copy the package which was enough to mislead consumers into thinking the defendant's product was a Jif product.

I've been accused of passing off--how do I defend the claim?

It can be difficult to defend a passing off claim because it is strict liability ie your intention is irrelevant. However, it is equally difficult to prove passing off. The key defences are:

  • use of your own name
  • use other than in the course of trade
  • claimant cannot show sufficient goodwill
  • claimant's delay in taking action
  • no proof of misrepresentation
  • misrepresentation has not caused damage to the claimant--this is normally very difficult to show once a misrepresentation has been established

How do I prevent passing off?

  • Register trade marks--this is sometimes of limited effect because a defendant is using similar packaging but is not using your trade mark registered brand name or logo. However, in limited circumstances colours and shapes associated with your brand might are registrable which could help further protect your packaging and deter would be copiers.
  • Register designs--if your packaging is novel in some way it might qualify for registered design protection or benefit from unregistered design protection.
  • The more distinctive your packaging, the easier it may be to prove a misrepresentation and evidence consequence customer confusion.

So, don your conical thinking cap, surround yourself with morph-suited box-headed back-up dancers and package up your product in a way that makes it stand out from the rest.

This blogpost is adapted from a Q&A originally published in Lexis®PSL IP & IT.


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