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If you have worked tirelessly to build a strong brand and developed an excellent reputation as the ‘go to’ name for consumers in your market sector you need to protect your business from disreputable parties. Many will be keen to take advantage of your established name by confusing consumers into thinking that their inferior goods are the same as your quality products. This is the essence of ‘passing off’. ‘Passing off’ is best explained by referring to the underlying principle which states, “A man is not to sell his own goods under the pretence that they are the goods of another man”. In law, ‘passing off’ is not a statutory matter, rather it is a civil tort (i.e. a civil wrong causing the claimant to suffer loss or harm). ‘Passing off’ typically occurs where one party tries to take advantage of an existing brand name or mark which is already well established and recognised by the public. This ‘passing off’ will typically cause those buying a product or service to mistakenly believe that they are supplied by the established brand. There are two main types of passing off; the classic form and the extended form.

What is the ‘classic form’ of passing off?

In order for a tort of passing off to be considered the ‘classic form’, it must pass a three-part test used by the courts which requires that there must have been:

  • goodwill or reputation attached to the goods or services
  • a misrepresentation by the defendant to the public (whether or not intentional) leading or is likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant
  • damage to the claimant - due to the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant
 

What is the ‘extended form’ of passing off?

The ‘extended form’ differs from the ‘classic form’ in that it covers passing off that affects and is brought by a collective of traders with shared goodwill in a mark (e.g. Spanish Sherry producers). The test for the ‘extended form’ of passing off involves five part and requires that there must have been:

  • a misrepresentation
  • made by a trader in the course of trade
  • to prospective customers of his or ultimate consumers of goods or services supplied by him
  • which is calculated to injure the business or goodwill of another (in the sense that this is a reasonably foreseeable consequence)
  • which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so
 

Final words

If you are concerned that another party is ‘passing off’ goods or services, it is essential to seek professional legal guidance as early in the matter as possible. An experienced commercial IP Solicitor will quickly assess the situation, recommend a course of action, and intervene to protect your brand. Where possible, they will use Alternative Dispute Resolution (ADR) methods such as negotiation or mediation to bring a matter to a satisfactory conclusion in the fastest time without involving the courts. If court action is needed, they will represent your interests and seek the best possible legal outcome.

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In closing

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