Q&As

Is it possible to bring a claim for passing off based on the goodwill and reputation in a mark in respect of goods against a company which has applied to register a trade mark for services? Is there any relevant case law on this point?

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Produced in partnership with Steven Murray of HCR Law
Published on: 13 December 2017
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Legislation

Section 5(4) of the Trade Marks Act 1994 (TMA 1994) prevents the registration of a trade mark where a successful action for passing off may be brought. Even if the mark is registered before the passing off action is brought, the mark may be declared invalid by the registrar or the court under TMA 1994, s 47(2)(b)).

The elements of a claim for passing off are summarised in Practice Note: Introduction to passing off.

Misrepresentation and confusion

In a claim for passing off, an alleged infringer’s misrepresentation must deceive actual or potential customers, to the extent that those purchasers are confused as to the origin of the goods or services sold by the similarities between the proprietor’s and alleged infringer’s branding.

The question here is, therefore, whether confusion, sufficient to bring

Steven Murray
Steven Murray

HCR Law

Pro-active, commercially minded litigator specialising in IP infringements and international contractual disputes. Qualified in 2004 and previously headed up the firm's IP team.

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Jurisdiction(s):
United Kingdom
Related legal acts:
Key definition:
Passing off definition
What does Passing off mean?

Passing off is a law'>common law action used to protect unregistered trade mark rights in the UK. The three principal elements which must be demonstrated in order to succeed in a passing off case are goodwill, misrepresentation and damage.

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