Can I Rely On Passing Off If I Don’t Have a Trade Mark?

The short answer is yes, probably, but as always, context is key. There would need to be careful consideration both of whether you have the necessary rights to allow you to rely on passing off and also whether the other side is in fact guilty of passing off.

Passing off is often described as the protection of unregistered trade mark rights. That being said, we would always recommend that you register a trade mark if at all possible.

As will be seen later on in this guide, it is generally easier to prove trade mark infringement than it is passing off. Sometimes, however, it is not possible to register a trade mark or you just haven’t got round to doing so and by the time you notice an issue it is possibly to late to do so. In these scenarios it will be necessary to see if you can rely on passing off.

What Is Passing Off?

Passing off is a tort. This means that it is a civil cause of action that has been developed by the courts over the years as opposed to relying on an Act of Parliament to make it law.

It is often referred to as an unregistered trade mark as generally it protects the goodwill present in a brand or logo.

The courts set out the test for passing off in a famous case concerning the ‘Jiff Lemon’ product. That test requires you to prove three key elements:

1. Goodwill: The Claimant has a protectable reputation or goodwill in their brand.
2. Misrepresentation: The actions of the Defendant are a misrepresentation that their goods or services are linked to the Claimant which could cause confusion. This misrepresentation need not be intentional.
3. Damage: The Claimant suffers or could suffer damage as a result of the misrepresentation.

What Do I Have To Prove in a Passing Off Claim?

There are two key things a Claimant has to prove. Firstly, that they have goodwill in the relevant name or brand and secondly that the Defendants actions are causing confusion.

1.     Goodwill

In respect of goodwill this has been defined as the compelling force that brings custom to a business. It is often likened to a reputation but it is not quite this as you can have a poor reputation. Generally you need to show consistent sales over a period of time to show goodwill. The other thing to note about goodwill is that it is limited to the areas where you trade, so if you trade in the North West that is where your goodwill is based and it will not extend to the South East.

2.     Consumer Confusion

The second point to prove is that the Defendants actions are causing confusion, often this will require actual evidence that consumers have been confused as to the origin of goods or services.

What Are The Limitations of Relying on Passing Off?

There are a few limitations to passing off which mean a registered trade mark is a better option if available. These can be summarised as:

1. Goodwill must be proved

The need to prove goodwill. You have to provide evidence to show that you have the goodwill you claim to have. This is not necessary if you have a registered trade mark, you simply need to show your registration and possibly show that you have been using the trade mark.

2. Geographical limitations

Your goodwill is restricted to where you trade. This means that if somebody is using the same or a similar brand in a different area of the country where you don’t trade you may not be able to take action as you don’t have goodwill in that area. A registered trade mark protects you across the whole of the UK. The one caveat to this is that your goodwill in one area can be used to oppose an application for a UK trade mark, even if the goodwill is limited to one geographic area.

3. Proof of confusion is required

You need to prove confusion. This is not necessary with trade marks, the most you need to do is show that there is a likelihood of confusion, proof of actual confusion is not required.

Conclusion: Passing Off vs Trade Mark Registration

Where possible, it is always preferable to obtain a registered trade mark for your brand. If this is not possible then passing off is a useful alternative that can still prove very effective.

Whilst passing off does have its limitations its usefulness is that you do not register it and so as long as you can prove goodwill you can rely on it.

Whether you want to register a trade mark or are looking to enforce your brand through a passing off action, our expert intellectual property solicitors can assist.