Passing off

For other uses of this and related terms, see Pass (disambiguation).

In common law countries such as England, Australia and New Zealand, passing off is a common law tort which can be used to enforce unregistered trade mark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation.

The law of passing off prevents one trader from misrepresenting goods or services as being the goods and services of another, and also prevents a trader from holding out his or her goods or services as having some association or connection with another when this is not true.

Passing off and trade mark law

A cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a get-up (the whole external appearance or look-and-feel of a product, including any marks or other indicia used) which is considered to be similar to that of another party's product, including any registered or unregistered trademarks. Passing off is of particular significance where an action for trade mark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trade mark and the unregistered mark). Passing off is a common law cause of action, whereas statutory law such as the United Kingdom Trade Marks Act 1994 provides for enforcement of registered trademarks through infringement proceedings.

Passing off and the law of registered trade marks deal with overlapping factual situations, but deal with them in different ways. Passing off does not confer monopoly rights to any names, marks, get-up or other indicia. It does not recognize them as property in its own right.

Instead, the law of passing off is designed to prevent misrepresentation in the course of trade to the public, for example, that there is some sort of association between the businesses of two traders.

One recent example of its application by the United Kingdom Intellectual Property Office can be found in a Trade Mark Opposition Decision in 2001.^[1] It was held that two brands of confectionery both named "Refreshers", one made by Swizzels Matlow and one by Trebor Bassett, which had coexisted since the 1930s, would deceive a consumer as to their source for some items but not for others. Both coexist in the marketplace.

Required elements

When coming to Court, there are three elements, often referred to as the Classic Trinity, in the tort which must be fulfilled. In Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All E.R. 873 Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink v. Townend & Sons Ltd. (1979 AC 731, 742 (HL)) (the "Advocaat Case") to three elements:

Goodwill owned by a trader
Misrepresentation
Damage to goodwill

The plaintiff has the burden of proving goodwill in its goods or services, get-up of goods, brand, mark or the thing standing for itself.

The plaintiff also has the burden of proof to show false representation (intentional or otherwise) to the public to have them believe that goods/services of the defendant are that of the Plaintiff. There must be some connection between the plaintiff's and defendant's goods, services or trade. They must show likelihood or actual deception or confusion by the public. Deception or confusion, however, does not consider a "moron in a hurry".^[2]

It is the Court's duty to decide similarity or identity of the marks, goods or services. The criteria are often: aural, visual and conceptual similarity (often applied in trade mark infringement cases).

For the element of damage to goodwill, there may be a loss or diversion of trade or dilution of goodwill. The plaintiff need not prove actual or special damage; real and tangible probability of damage is sufficient. This damage should however be reasonably foreseeable. It is not enough just to show likelihood or actual deception or confusion.

Ultimately, the Court must use common sense in determining the case, based on evidence and judicial discretion, and not witnesses.

Disclaimers may not be enough to avoid passing off or cause of action.^[3]

Extended passing off

One of the instances where passing off is actionable is the extended form of passing off, where a misrepresentation as to the particular quality of a product or service causes harm to another's goodwill. An example of this is Erven Warnink v. Townend & Sons Ltd., in which the makers of advocaat sued a manufacturer of a drink similar but not identical to advocaat, but which was successfully marketed as being advocaat.

The extended form of passing off is used by celebrities as a means of enforcing their personality rights in common law jurisdictions. Common law jurisdictions (with the exception of Jamaica) do not recognise personality rights as rights of property. Accordingly, celebrities whose images or names have been used can successfully sue if there is a representation that a product or service is being endorsed or sponsored by them or that the use of their likenesses was authorised when this is not true.^[4]

Reverse passing off

Another variety, somewhat rarer is so-called 'reverse passing off'. This occurs where a trader markets another's product or service as being his own (see John Roberts Powers School v Tessensohn [1995] FSR 947). It is usually covered by the same court rulings as straight passing off.^[5]

References

↑ Jones, R. A. (on behalf of the Registrar and Comptroller-General) (21 February 2001). "IN THE MATTER OF APPLICATION NO. 2161647 IN THE NAME OF TREBOR BASSETT LIMITED AND IN THE MATTER OF OPPOSITION NO. 49406 THERETO BY SWIZZELS MATLOW LIMITED" (PDF). ipo.gov.uk. United Kingdom Intellectual Property Office. p. 9. Retrieved 25 February 2014.
↑ Peter, Groves (2011). A Dictionary of Intellectual Property Law. Edward Elgar Publishing. p. 202. ISBN 978-1-84980-777-7. Retrieved 25 February 2014.
↑ Asprey and Garrard v. WRA (Guns) Ltd [2002] FSR 30. However, this was expressed in the dicta of the decision in that case.
↑ Irvine v Talksport Ltd [2003] FSR 35, ChD)
↑ Dastar Corp. v. Twentieth Century Fox Film Corp.