What are the disadvantages of passing off

Passing off refers to an act of unregistered trade mark infringement in the UK. It can be a very useful and flexible tool in the battle against infringers but there are some advantages and disadvantages to it.

What is passing off

In order for a passing off claim to be successful, a claimant (the party asserting the rights) needs to prove:

1. The claimant’s brand or mark has a goodwill in the UK;
2. The defendant’s use of a brand or mark amounts to a misrepresentation; and
3. This is likely to cause damage to the claimant.

Each of these criteria will need to be proved to the “balance of probabilities”, this being that it is more likely to be true than not.

Passing off is a common law tort, this means that there is no definition found within the statute books but rather its ingredients are found in case law.

Passing off can be flexible in its application, this is something that can be seen in the case of Fenty & Ors v Arcadia & Anr (https://www.judiciary.uk/wp-content/uploads/2015/01/fenty-others-v-arcadia-others1.pdf). In this case Rihanna was successful in her argument that t-shirts sold by Top Shop bearing a picture of Rihanna amounted to passing off.

Pros

• No registration requirements. Unlike registered trade marks (which require a registration fee to be paid), passing off does not require any registrations for the rights to be valid and enforceable.
• No registration costs. Due to there not being a registration requirement, there is similarly no requirement to pay any fees for the registration of goodwill or the right of passing off.
• A passing off claim can be successful in circumstances where a trade mark infringement claim will fail, this is especially so in the context of “copycat” products.

Cons

• Evidential requirements. A successful claimant in a passing off claim will need to establish that it owns goodwill to its brand or mark, this places a high evidential burden on the claimant to gather evidence relating to financial records and marketing material.
• As there is a high evidential burden on the claimant, claimants in passing off claims can often spend lots of money gathering and obtaining the significant volumes of evidence required to be successful in a claim.
• Passing off rights will accrue as a brand is used in the UK, because of this there is a burden of time before launching a product and being able to rely on passing off rights.
• Lack of certainty. Registered IP such as trade marks provide certainty on the extent and duration of the IP right, because passing off relies on the claimant having evidence to support its claim (and a judge favourably interpreting that evidence) a passing off claim can have internet uncertainty.

Summary

Passing off is a very useful tool to be used against infringers. However, it often works best as part of a sensible IP protection strategy that will involve registered IP rights (such as trade marks and design rights). This is predominantly due to the high evidential burden (and cost) associated with a passing off claim.

The creation of a suitable IP protection strategy will almost always certainly involve consideration towards passing off but it should not usually be the only IP right a party intends to rely on.

Our specialist lawyers here at Briffa are here to help to provide advice tailored to your specific circumstances. Please do not hesitate to contact us at info@briffa.com or on 0207 096 2779 for an initial free consultation.

Written by Sam O’Toole – Senior Associate