How Effective is the Law of Passing Off for My Business in England?

Protecting your intellectual property is vital, as this can help develop your business’s brand and reputation. However, competitors may attempt to pass off your goods as their own. If you are a business in England and hold an unregistered trade mark, you should be aware of how to best protect your intellectual property from competitors. This article will discuss the best means of trade mark protection available to you and your business. It will also discuss how you can protect against passing off. 

Trade Mark Essentials

LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.

Download Now

What is Passing Off?

Passing off occurs when someone attempts to misrepresent goods or services as their own when they actually belong to someone else. If your trade mark is unregistered, you may still wish to challenge competitors who use your trade mark without your consent. 

You can challenge others who infringe your trade mark rights under the law of passing off. However, this is generally only in relation to unregistered trade marks. Examples of when you might engage the law of passing off include when another business:

• uses your unregistered trade mark;
• sells products associated with your trade mark as their own; or
• claims they have a license to use your trade mark when they do not.  

Many other possible situations may occur. However, as stated, you would generally only bring a claim for passing off where you have not registered your trade mark with the Intellectual Property Office. Your claim’s effectiveness depends on your trade mark’s strength and how much goodwill you have built amongst your consumers. For clarity, you may still bring an action based on passing off in relation to a registered trade mark, but you would likely opt to bring a claim for trade mark infringement instead, as this claim is generally easier to establish.

How does Passing Off Work?

To establish passing off, you must prove you have developed goodwill or reputation around your products or services. In addition, you must have built up goodwill or a reputation around a specific trade mark. In other words, strong consumer trust is a vital element in a passing off claim. Consumers should purchase your products or services because of the trade mark attached to them.

You must also demonstrate that a misrepresentation has occurred, regardless of malicious intent or innocence. 

You must ultimately demonstrate that your business has suffered damage as a result of the misrepresentation. If you can prove your competitor has caused financial or reputational damage, they may owe you substantial compensation.

Therefore, there are many different points that you must prove for a successful claim in passing off. However, you have registered your trade mark with the Intellectual Property Office, the process is much more straightforward. This is because your registration will serve as sufficient proof of ownership of the mark and exclusivity over its use.

What is Goodwill? 

Passing off claims must show that your business has developed ‘goodwill’ within the UK. Goodwill refers to the ability of customers to purchase goods or services by recognising your brand or business through your trade mark. In other words, it is the advantage of having a good name and consumers knowing and liking your brand and its goods or services.

There is, of course, an important reputational element as well. Therefore, it is important that your business has established its brand and your customers rely on your unregistered trade mark to direct consumers to your products or services. Only the owner of goodwill can successfully claim passing off. Therefore, for a successful claim, you must prove that: 

• you have a strong customer base; 
• your customers associate your products with your trade mark; 
• you are actively trading; and 
• your brand reputation is interlinked with its products. 

Potential Remedies 

If your claim is successful, the court may mandate a range of remedies, including but not limited to: 

• compensation or damages for financial or reputational damage;
• an injunction to stop the business from passing off your goods or services as their own; 
• an order for destruction of any goods that infringe your rights; or
• an order for the cessation of any services that infringe your rights. 

Therefore, passing off can be a very effective method of protecting your unregistered trade mark rights. 

Passing Off vs. Trade Mark Infringement

Passing off and infringement proceedings for registered trade marks are both civil rather than criminal legal procedures. This is because they both seek to restore and protect your rights. However, you can register your trade mark with the Intellectual Property Office to make protecting it from infringement significantly easier. 

You should register a trademark if possible, as this is the best way to deter competitors from infringing on your rights. Competitors can infringe your rights by: 

• imitating your products; 
• using your logo without consent; or
• otherwise using your trade mark for their own benefit. 

When you register your mark, you can use the ® symbol next to it. This displays your ownership of rights and acts as a warning to other businesses that you can take legal action against anyone who uses your mark without consent. You do not need to prove damage or goodwill to take infringement action for a competitor using your registered mark. 

Therefore, claims based on infringement of a registered trade mark are a much easier process. You can start legal proceedings immediately if you can prove that the other business infringed on your rights.

Protecting Your Business from Passing Off

A good first preventative step is to create a distinctive brand identity with unique logos and packaging that set you apart from competitors. Consistently deliver quality products or services to build customer loyalty and establish goodwill – this is a key element in passing off cases. You should also keep records of your marketing and branding materials, sales figures and customer feedback. Should you require it, this could serve as helpful evidence if you need to prove passing off.

While full trade mark registration can be costly, consider registering your most essential brand elements, such as your business name and logo.

Key Takeaways

In England, you can protect your unregistered trade mark through claims of passing off. This will help prevent competitors from passing off your trademark, or associated goods and services, as their own. 

To be successful in a claim for passing off, you must be able to show that:  

• you have built up a strong reputation for the associated trade mark; 
• misrepresentation has occurred by another business; and 
• this misrepresentation has resulted in financial or reputational damage 

In contrast, registered trade marks do not need to prove damage or goodwill and can initiate infringement proceedings more straightforwardly. You should speak to a legal professional to consider the best option for your business if you believe you are a victim of a competitor passing off your trade mark as their own, or if you wish to register a trade mark.

If you need help or advice regarding a passing off claim or registering a trade mark, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.

Frequently Asked Questions