What is passing off?

Last week I was wandering around the fields of Glastonbury. It is a slightly different vibe to my day job and for the third time in a row I did not have to witness the mud swamps. I just needed suntan lotion, glasses, and a suitably quirky hat. After three years and a global pandemic, it was nice to be back with a cider in hand, close friends, good music, and great food.

Over the 14-hour days of walking around the site, some of the names and logos of the food businesses around the festival site did bring to mind some well-known brands, often in a cheeky way. But I did not bore my friends with the law around potential passing off issues. As interesting as it is, we were there to have fun.

It is almost an inevitable fact of life that whilst operating your business others may try and take advantage of the brand and goodwill you have created.

You may find a business is using a similar trading name or branding as you, and that you are losing customers. You may also wish to prevent your brand being associated with another, which could damage the reputation of your business.

Concerns may also arise when you spot a business using a website domain name which is identical or similar to your trading name, service, or product.

Passing off is complex area of Intellectual Property law which requires a deep understanding of a client’s business, their customers, and their geographical market. It is important to have evidence of the negative impact potential infringers are having on your business.

So, what is passing off?

In order to successfully claim passing off against another business you will need to show you have:

1. Established goodwill (i.e. a customer following) in the relevant marketplace; and
2. That the infringing business has misrepresented their products or services as being related to your business, which leads to or is likely to deceive customers; and
3. The misrepresentation causes or is likely to cause your business damage (i.e. financial loss) as a result.

Passing off actions often arise alongside trade mark infringement disputes. But your business does not have to have a registered Trade Mark to bring a successful passing off claim.

How we can help you

We have experience in advising a broad range of clients as to potential passing off actions. We have acted for both businesses looking to make a passing off claim and in defending passing off claims.

Please feel free to contact us for a free initial consultation to see how we can help you.