Trademark Infringement or a Case of Passing Off: What’s the Difference?

Is Trademark Infringement the Same As Passing Off?

In the UK, both “trademark infringement” and “passing off” concern the unauthorised use of a mark or sign in relation to goods or services in a way that might cause confusion to the public. However, there are notable differences between the two. Here’s a comparison:

Nature and Basis:

• Trademark Infringement: This pertains to the violation of exclusive rights attached to a registered trademark without the authorisation of the trademark owner or a licensee.
• Passing Off: This is a common law tort which protects the goodwill of a trader from misrepresentation. The mark or sign in question does not need to be registered.

Requirements:

• Trademark Infringement: Key requirements include proving that:
  • There’s a valid registered trademark.
  • The alleged infringer used an identical or similar sign.
  • The use was in the course of trade and the trades or sectors were similar. For example an apple being used in food is unlikely to be confused with one used in technology.

• Passing Off: The claimant must prove three key elements (often referred to as the “Classic Trinity”):
  • Goodwill or reputation attached to the goods or services.
  • A misrepresentation by the defendant to the public, leading or likely to lead them to believe that the defendant’s goods or services are the claimant’s.
  • This misrepresentation has caused, or is likely to cause, damage to the claimant.

Rights Origin:

• Trademark Infringement: The rights arise from the registration of the trademark. The owner of a registered trademark has an exclusive right to the use of that mark in connection to certain goods or services.
• Passing Off: Rights are based on the established goodwill or reputation in the market, not on any form of registration. You’ll need to be able to show you’re actually trading, have clients or customers or prospective ones that may be confused by the similar or same name.

Remedies:

• Trademark Infringement: Remedies can include damages or an account of profits, an injunction to prevent further infringement, and order for the delivery up or destruction of infringing items.
• Passing Off: Remedies are similar to trademark infringement, such as damages, injunctions, and, in some cases, an account of profits but this can be more difficult to prove.

Duration:

• Trademark Infringement: A registered trademark typically lasts for 10 years in the UK, but can be renewed indefinitely every 10 years as long as it remains in use and the renewal fees are paid.
• Passing Off: As long as the claimant’s goods or services have goodwill and reputation in the market, protection can continue indefinitely.

Geographical Scope:

• Trademark Infringement: The infringement action can only be brought in the jurisdiction where the trademark is registered. For example the UK as a whole.
• Passing Off: The action can be brought in area where the claimant has established goodwill or reputation. For example a plumber working in London is likely to only be working within a few hours of that location.

In essence, while both concepts aim to protect businesses from unfair competition and deception in the marketplace, the mechanisms and requirements differ. Trademark infringement operates within the statutory framework of trademark laws, whereas passing off is rooted in common law principles designed to prevent misrepresentation.