Feb 21 2011: An introduction to passing off and the protection of goodwill
1. What is passing off?
Passing off is a right that protects the goodwill in businesses or the way in which businesses sell their products or services; essentially passing off helps protect a business’ brand.
The purpose of passing off is to stop a business from benefiting from another's goods or commercial reputation. It aims to prevent unauthorised imitation of names and the 'get up' (overall appearance) of goods or services.
It is often used as an alternative action against trademark infringement as it can be used to protect those marks which are not capable of protection through formal registration.
2. What are the requirements of a passing off claim?
Generally there are three requirements for a successful passing off claim which include:
• That the claimant has goodwill – Basically, this is the reputation of the business - the attractive force that brings in custom to the business. It is the key thing that distinguishes established businesses from new ones.
• That the claimant’s goodwill has been misrepresented - Misrepresentations must be made by a trader in the course of trade and they must have lead to confusion or the likelihood of confusion for the customer.
• That damage has occurred as a result of the misrepresentation - This means establishing actual or likely financial loss. This might include any loss of profit in an existing market, loss of reputation or loss of an opportunity to expand the business.
As with much litigation, there are complicated rules to adhere to in establishing each of these elements.
3. What to do if someone is harming the goodwill in your business by passing off?
If you can establish the three requirements of a passing off claim, remedies may include financial damages or enabling the claimant to receive a share of profits that the infringer makes following the abuse of the claimant’s goodwill. The court may also grant orders to stop the infringer continuing to use marks and the claimant can ask for delivery up or destruction of any products that infringe its goodwill, mark or general get up.
For further information regarding passing off please contact Simon Smith.