Elements of passing off—misrepresentation

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

  • Elements of passing off—misrepresentation
  • Misrepresentation
  • Misrepresentation as to origin
  • Where the defendant represents that the claimant’s goods or services are of a particular type of quality
  • Instruments of fraud
  • Reverse passing off
  • Substitution
  • Misrepresentation as to equivalence
  • Interchangeable components
  • False endorsement
  • More...

Elements of passing off—misrepresentation

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 have 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 its goods or services that 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.

There are two principal forms of passing off:

  1. the original 'classical trinity' form as laid down in Reckitt v Borden (the 'Jif Lemon' case) which requires the claimant to establish that: its goods and services have acquired goodwill or reputation; there has been a misrepresentation by the defendant which leads consumers into thinking that goods/services offered by the defendant are those of the claimant; and damage has resulted or is likely to result; and

  2. the 'extended' form, where a class of traders share 'collective' goodwill in a particular trade name applied to a class of goods such as champagne or sherry. By way of illustration, in Fage v Chobani, the court held that a US company

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