Passing off

Passing off is a common law tort used to enforce unregistered trademark rights. The tort of passing off protects the goodwill attached to unregistered trademarks, get-up, or trade dress from being misrepresented as that of another business. This legal remedy is particularly important for businesses that have not registered their trademarks but have established a reputation or goodwill under a distinctive trade dress or brand name. Passing off is a form of intellectual property protection that complements registered trademark rights, offering a recourse for businesses to prevent others from unfairly benefiting from their established market presence.

Elements of Passing Off

The claimant in a passing off case must prove three essential elements, often referred to as the "classic trinity," which were outlined in the case of Reckitt & Colman Ltd v Borden Inc (1990):

1. Goodwill or reputation attached to the goods or services, which identifies them as originating from a particular source.
2. Misrepresentation by the defendant to the public (intentional or not) 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.
3. Damage to the claimant's goodwill or reputation as a result of the defendant's misrepresentation.

Jurisdictional Application

The specific application and recognition of passing off can vary significantly between jurisdictions. In the United Kingdom, passing off is a well-established legal remedy. Similarly, countries like Canada, Australia, and India recognize and enforce passing off to protect unregistered trademark rights. However, the details regarding the proof of the elements, especially goodwill and damage, can differ.

Remedies

The remedies for passing off may include injunctions to prevent further misrepresentation, an order for the destruction or forfeiture of infringing goods, and damages or an account of profits to compensate for the loss suffered by the claimant.

Comparison with Trademark Infringement

While both passing off and trademark infringement protect against the unauthorized use of marks, they differ in several respects. Trademark infringement requires a registered trademark and focuses on the unauthorized use of a mark that is identical or confusingly similar to the registered trademark. Passing off, on the other hand, does not require registration and is based on the protection of the business's goodwill.

Defenses

Defendants in passing off cases may argue that there is no misrepresentation, that the claimant has no goodwill to protect, or that there has been no damage to the claimant's goodwill. Additionally, in some jurisdictions, honest concurrent use may serve as a defense.

See Also

• Trademark
• Unfair competition
• Intellectual property
• Trade dress
• Goodwill (accounting)