Learn about passing off and what elements need to be proved
What is passing off?
What are the elements of passing off that need to be proved?
What does passing off protect?
What defences are there to a passing off action?
Will an untrue endorsement amount to passing off?
What are the remedies for passing off?
What is passing off?
The law of passing off is intended (amongst other things) to prevent consumers being misled into believing that goods or businesses are those of someone else. Advertisements which falsely suggest that one trader's goods or services have a connection or association with another trader's business may give rise to a passing off action if this falsity could cause the innocent party damage. Examples of passing off include use of someone else's trade name, trade mark or the "get up" of their product, and may include copying the underlying theme or idea of a well known advertising campaign.
What are the elements of passing off that need to be proved?
A will succeed in a passing off action against B if A can show that:
(1) aspects of A's branding/packaging/advertising have been so extensively used in the marketplace that they have become distinctive of A's products/business;
(2) B is using one or more of these distinctive aspects in such a way as to give rise to a misrepresentation (e.g. as to whether A and B or their respective products are the same business or connected); and
(3) that (1) and (2) are likely to cause A significant damage .
What does passing off protect?
Passing off protects any aspect of the presentation of a trader's products which distinguishes these products from anyone else's and helps the trader sell the product. In other words it protects a trader's goodwill in his business.
What defences are there to a passing off action?
There are a number of defences to a passing off action. These include that the claimant has not established that he has built up sufficient goodwill in the branding elements he says the defendant is misusing; the parties have concurrent rights; the public will not be confused; and the claimant has not suffered and is unlikely to suffer any loss.
Will an untrue endorsement amount to passing off?
If an advertisement alleges that a product has been endorsed by a famous personality or company and their consent has not been obtained, then this may amount to passing off. It may also amount to a malicious falsehood, a misrepresentation, and in limited circumstances, a defamatory statement.
What are the remedies for passing off?
Provided none of the defences apply, the claimant will be entitled to damages (or an account of the defendant's profits), an order for delivery up of the offending articles (in other words, the goods which are passing off) and an injunction restraining further infringement. An injunction may result in an infringing advertising campaign being stopped.
