Key elements required to prove passing off
To successfully establish passing off under UK law, three key elements must be demonstrated:
- Goodwill: Goodwill is often described as “the benefit and advantage of the good name, reputation and connection of a business”. The Claimant must prove that it has established reputation or goodwill in its name, goods, mark, or other identifying feature; and that the same sets them apart from other competitors in the market.
- Misrepresentation: The Claimant must show that the Defendant has misrepresented their goods, mark, or feature as those of the Claimant, and that the same has led or is likely to lead to confusion, deception of a misleading of the public that the goods, mark or other identifying feature is that of the Claimants.
- Damage: Proof that the claimant has suffered, or is likely to suffer, actual or potential damage to the Claimant’s goodwill.
Examples of passing off cases in the UK
Common examples of passing off include:
- Using similar packaging, logos, or branding that consumers associate with an established company.
- Operating under a name nearly identical to a competitor's recognised brand.
- Advertising or promoting goods or services in a manner that implies endorsement or affiliation from another business.
Remedies available in passing off claims
The typical remedies available in passing Off actions are:
- Injunctions: Including interim and final injunctions.
- Damages or account of profits: Financial compensation for losses suffered or profits unlawfully gained by the infringing party.
- Delivery up or Destruction of infringing materials: The court may order the infringing products, packaging, or promotional materials to be destroyed.
Defences to Passing off claims
Liability for passing off actions is strict, meaning that there is no requirement for intention, and defending any such claims can be difficult and complex. There are however some key defences as follows:
- Inability of the Claimant to show goodwill
- The Claimant’s mark is generic
- Inability of the Claimant proving misrepresentation
- Consent of the Claimant or encouragement by them of use of the mark
- No damage to the Claimant
