Misrepresentation and Likelihood of Confusion: Two Different Tests

Whilst the tests for ‘Misrepresentation’ and ‘Confusion’ are distinguished from one another, clients often use the terms interchangeably when they find a competitors branding looks too close to theirs. Under UK law, though, these are distinct legal tests belonging to different causes of action — passing off and registered trade mark infringement — and picking the right one shapes the whole case.

Passing off: Misrepresentation

Passing off is a common law tort which helps protect third parties who have acquired unregistered rights. To succeed, a claimant must establish the “classic trinity”:

1. goodwill in the claimant’s business,
2. a misrepresentation by the defendant,
3. and resulting damage to that goodwill.

Misrepresentation here means deception of a substantial number of consumers who erroneously believe there is a trade connection between the parties.  These are ordinary members of the public rather than especially knowledgeable or closely connected individuals and crucially, whether there has been a misrepresentation requires a full assessment of the whole of a trader’s get-up, not just name similarity in isolation.  Therefore striking differences in branding, packaging or premises can defeat a passing off claim even where names are similar.

Trade mark infringement: likelihood of confusion

Registered trade mark infringement is governed by Trade Marks Act, 1994. Under section 10(2) of the Act, a person infringes a registered mark where an identical or similar sign is used on identical or similar goods or services and, there exists a likelihood of confusion on the part of the relevant public.  This is assessed through the “global appreciation test”.  Guidance is taken from a variety of case law including Sabel v Puma, Canon v Metro-Goldwyn-Mayer, Lloyd Schuhfabrik Meyer and related CJEU cases, weighing the similarity of marks, the similarity of goods or services, and the perspective of the notional “average consumer” who is reasonably well informed and reasonably observant and circumspect but rarely compares marks side by side, relying instead on an imperfect recollection.  Confusion is assessed objectively not against actual evidence of real consumers being misled, though such evidence can help.

Why the distinction matters in practice

The tests diverge in three important ways. First, passing off requires proof of actual goodwill built through trade; trade mark infringement requires only a valid registration, regardless of how much the mark has actually been used commercially. Second, misrepresentation looks at the full commercial picture including, logos, packaging, context — while likelihood of confusion takes a more narrow approach by comparing the similarity of the marks and the goods and services.  Third, passing off additionally requires proof of damage to goodwill, whereas trade mark infringement under section 10(2) needs no separate damage element — confusion alone suffices.

In practice, brand owners frequently plead both causes of action together where they hold a registration and have trading goodwill, since a defendant who escapes one test may still be caught by the other.  However, the important thing to note is that the key difference between misrepresentation and likelihood of confusion is deception.