Passing off - intellectual property law

What is passing off? Passing off is a legal reference for what happens when an individual or a business misrepresents someone else’s goods or services in order to try and pass them off as their own.  An example of this could be if someone starts using a business name and logo that is very similar to yours and selling similar products and services, to try and convince customers that they are actually buying from you.

Passing off law in the UK deals with unregistered rights. This means that even if your business or brand logos, name or designs are not registered trademarks, if someone else tries to use them, or something very similar to them, to mislead people into believing they are buying your products or services, you can issue a passing off claim against them.

Is passing off the same as trademark infringement?

Whilst there may be some crossover between claims that include both passing off infringement and trademark infringement, they are different issues. A trademark must be registered with the relevant body in order for trademark infringement to be possible; you can find out more about trademark infringement here. However, if you think that an individual or a business is passing off your trademark or other recognisable elements of your branding to mislead the people buying from them that they are buying from you, this may be considered to be passing off, even if you haven’t registered your logo or other brand assets at this point.

 

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What happens if your passing off action is successful?

If your passing off claim is upheld, depending on the circumstances, you may be able to include the following actions in your claim:

  • An injunction that stops the defendant from continuing to sell the specified products or services. It may be possible to get an interim injunction whilst the case is ongoing, then a final injunction when the claim is upheld
  • The confiscation and/or destruction of the infringing products or goods
  • Damages to be awarded due to the loss that the claimant has suffered as a result of the infringement
  • An account of the defendant’s profits in relation to the infringing products or services

How can you prove a passing off claim?

The process of issuing a passing off UK claim can be complex. There are some requirements that a business or brand has to meet in order for an action to be successful. These include:

  • The business making the passing off claim must have a reputation or ‘goodwill’ that’s directly associated with their products or services
  • There must have been a misrepresentation by the defendant that has led to confusion
  • The misrepresentation must have caused some damage to the claimant’s goodwill or reputation in relation to their products or services

These requirements are not always easy to prove, but Stephensons have the necessary expertise to help you build a passing off claim with the best chance of a positive outcome. Get in touch with us for more information about how we can help by calling the team on 0203 816 9303.

How long does a passing off claim take?

Due to the potential complexity of passing off claims, where the evidence required can be extensive and may take some time to be gathered, this type of claim process can be lengthy. For example, it might be necessary to carry out market research surveys to demonstrate that the claimant has an existing reputation in relation to specific goods or services.

However, at Stephensons, we always do our utmost to resolve these types of claims as quickly as possible. The length of time that this will take will vary in each case, depending on the specific circumstances involved.

Are there other ways to resolve passing off disputes?

Whenever possible, it’s best to try to avoid taking a passing off claim to court; it may be possible to settle the dispute before it gets to that stage. We offer alternative dispute resolution services, such as mediation, which can mean that the conflict between the claimant and the defendant can be resolved before court action is required. Mediation sessions involve both parties and a mediator, and this type of dispute resolution can help save time, money and stress for all involved.

What to do if you have been accused of passing off

If you have been accused of passing off, whether that’s passing off a company name, branding elements, packaging or any other assets belonging to another business, we can offer expert legal advice on the matter. Get in touch with our intellectual property team today, by calling 0203 816 9303.

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