Passing off: and how to avoid it

What is Passing Off?

“Passing off” is a principle of the common law tort which prevents one person from misrepresenting his or her goods or services as being the goods or services of another. It is primarily related to the unauthorised use of trademarks or trade names, but extends beyond that to cover misrepresentations in a broader sense. In the UK, the law of passing off serves to protect unregistered trade mark rights.

How to establish a Passing off claim

Here are the three essential elements to establish a claim for passing off in the UK:

Goodwill or reputation

Goodwill or reputation attached to the goods or services in the mind of the purchasing public by association with the identifying “get-up” (whether it consists of a brand name or a trade description, or the individual features of labelling or packaging) under which the goods or services are offered to the public.

Misrepresentation

Misrepresentation by the defendant to the public (whether or not intentional) leading, or likely to lead, the public to believe that the goods or services offered by the defendant are the goods or services of the claimant.

Damage

Damage to the claimant, either actually caused it likely to be caused by 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.

To avoid passing off in the UK:

Conduct thorough research:

Before launching a new brand, product, or service, conduct a comprehensive search to ensure no other business is using a similar name or branding in the same or related industry. This should include online searches, trademark registries, and other relevant databases. Start.biz has a search tool  https://start.biz – which allows a search of Companies House and domains simultaneously which is a good place to start. 

Be original:

Create unique names, logos, and branding materials. Avoid anything that can be easily confused with an existing business, product, or service.

Seek professional advice:

Consulting with an Intellectual Property can provide clarity and advice on potential risks and how to mitigate them.

Monitor the market:

Keep an eye on competitors and new entrants in your industry. This will help you identify potential passing off issues early on.

Be cautious with marketing:

Ensure that your advertising, packaging, and promotional materials do not inadvertently suggest an association or endorsement from another brand or individual unless such an association or collaboration actually exists.

Respond promptly to concerns

If another business approaches you with concerns about potential passing off, address these concerns immediately. Often, open communication can resolve potential disputes before they escalate.

Register your trade mark:

Although registration isn’t necessary for a passing off claim, having a registered trade mark provides stronger protection against infringement and can act as evidence of your rights to a particular name or logo. A trademark will allow you to have exclusive rights to use your name or brand. That is all the evidence you need, whereas you will need to be able to provide more evidence of your existence and proof of trading under that name with dates. Fundamentally, it is a harder battle to fight without a trademark registered. If trademark registration is not possible or not something you want to go down just yet, Business Name Protection with its “Passing Off Assistance” may be an option that will appeal.

Document your branding efforts:

Maintain records of your branding activities, including the development of logos, packaging, and advertising campaigns and dates on which this was undertaken. This can serve as evidence if you ever need to assert your rights.

Educate your team:

Ensure that everyone involved in branding, marketing, and sales understands the importance of not infringing on the rights of others and knows how to spot potential issues. 

By adhering to these steps and remaining vigilant, businesses can minimise the risk of inadvertently passing off another’s goods or services as their own and can also protect their own brand from being misappropriated by others.