Elements of passing off—goodwill
Elements of passing off—goodwill

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Elements of passing off—goodwill
  • The elements of passing off
  • Potential claimants
  • Goodwill

Passing off is a common law tort which protects rights that are not capable of registration or are difficult to register as trade marks (eg colours, get-up and packaging), or rights that had not been registered formally, but have acquired goodwill. The law of passing off entitles a trader to prevent other traders from unfairly using its goodwill. It is unlawful for a trader to hold out that its goods or services have some association or connection with another trader when this is not the case. Passing off is a tort of strict liability: the intention of the trader liable for passing off is not relevant.AG Spalding Brothers v AW Gamage, Ltd [1914-15] All ER Rep 147Perry v Truefitt (1844) 49 ER 887

This Practice Note considers in detail, the second element of a claim for passing off—goodwill. For a general introduction to this area, see Practice Note: Introduction to passing off.

The elements of passing off

The 'classical trinity'

There are three elements required to prove passing off (commonly known as the 'classical trinity', a phrase coined in the Parma ham case), and restated by the House of Lords (HL) in the well-known Jif Lemon case:Reckitt and Colman Products Ltd v Borden Inc [1990] 1 All ER 873 ('Jif Lemon')Consorzio del Prosciutto di Parma v Marks & Spencer [1991] RPC 351 ('Parma ham')

  1. a goodwill or reputation attached to the relevant goods or services

  2. a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by it are the goods or services