Passing off
Encyclopedia
Passing off is a common law
tort
which can be used to enforce unregistered trademark
rights. The tort of passing off protects the goodwill
of a trader from a misrepresentation that causes damage to goodwill
.
The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.
for passing off is a form of intellectual property
enforcement against the unauthorised use of a mark which is considered to be similar to another party's registered or unregistered trademarks, particularly where an action for trademark infringement
based on a registered trade mark is unlikely to be successful (due to the differences between the registered trademark and the unregistered mark). Passing off is a form of common law, 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 trademarks 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 business of defendant and that of the claimant. Another example of passing off is where the defendant does something so that the public is misled into thinking the activity is associated with the claimant, and as a result the claimant suffers some damage, under the law of passing off it may be possible for the claimant to initiate action against the defendant.
(the Advocaat Case) to three elements.
These are:
1) Goodwill owned by a trader
2) Misrepresentation
3) Damage to goodwill
Plaintiffs have the burden of proving goodwill in its goods/services, get-up of goods, brand, mark and/or itself per se.
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 Defendant are that of the Plaintiff; thus, there must be some connection between Plaintiff’s and Defendant’s goods/services/trade. They must show likelihood and/or actual deception/confusion in the public. Deception/confusion, however, does not consider a ‘moron in a hurry’. (See Morning Star Cooperative Society v Express Newspapers Limited [1979] and Newsweek Inc. v. British Broadcasting Corp., [1979] R.P.C. 441 by Lord Denning.) It is the Court's duty to decide similarity/identity of the marks/goods/services the criterion of which often fall under three elements: aural, visual and conceptual similarity (often applied in trade marks infringement cases).
In relation to the element of damage to goodwill, there may be loss/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 insufficient to simply show likelihood/actual deception and/or confusion.
Ultimately, the Court must use common sense in determining the case, based on evidence and judicial discretion, and not witnesses.
Disclaimers may be insufficient to avoid passing-off or cause of action (See Asprey and Garrard v. WRA (Guns) Ltd [2002] FSR 30.) However, this was expressed in the dicta of the decision.
[1979] AC 731, 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 the celebrity or that the use of the likeness of the celebrity was authorised when this is not true.
Common law
Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...
tort
Tort
A tort, in common law jurisdictions, is a wrong that involves a breach of a civil duty owed to someone else. It is differentiated from a crime, which involves a breach of a duty owed to society in general...
which can be used to enforce unregistered trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
rights. The tort of passing off protects the goodwill
Goodwill (accounting)
Goodwill is an accounting concept meaning the value of an entity over and above the value of its assets. The term was originally used in accounting to express the intangible but quantifiable "prudent value" of an ongoing business beyond its assets, resulting perhaps because the reputation the firm...
of a trader from a misrepresentation that causes damage to goodwill
Goodwill (accounting)
Goodwill is an accounting concept meaning the value of an entity over and above the value of its assets. The term was originally used in accounting to express the intangible but quantifiable "prudent value" of an ongoing business beyond its assets, resulting perhaps because the reputation the firm...
.
The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.
Passing off and trademark law
A cause of actionCause of action
In the law, a cause of action is a set of facts sufficient to justify a right to sue to obtain money, property, or the enforcement of a right against another party. The term also refers to the legal theory upon which a plaintiff brings suit...
for passing off is a form of intellectual property
Intellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
enforcement against the unauthorised use of a mark which is considered to be similar to another party's registered or unregistered trademarks, particularly where an action for trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
based on a registered trade mark is unlikely to be successful (due to the differences between the registered trademark and the unregistered mark). Passing off is a form of common law, whereas statutory law
Statutory law
Statutory law or statute law is written law set down by a legislature or by a legislator .Statutes may originate with national, state legislatures or local municipalities...
such as the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
Trade Marks Act 1994
Trade Marks Act 1994
The Trade Marks Act 1994 is the law governing trademarks within the United Kingdom and the Isle of Man. It implements EU Directive No. 89/104/EEC which forms the framework for the trade mark laws of all EU member states, and replaced an earlier law, the Trade Marks Act 1938...
provides for enforcement of registered trademarks through infringement proceedings.
Passing off and the law of registered trademarks 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
Indicia
In philately, indicia are markings on a mail piece showing that postage has been prepaid by the sender. Indicia is the plural of the latin word indicium, meaning distinguishing marks, signs or identifying marks...
. 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 business of defendant and that of the claimant. Another example of passing off is where the defendant does something so that the public is misled into thinking the activity is associated with the claimant, and as a result the claimant suffers some damage, under the law of passing off it may be possible for the claimant to initiate action against the defendant.
Elements of Passing Off
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 Erwen Warnick B V v J Townend & Sons (Hull) Ltd [1979] AC 731, 742 (HL)Erven Warnink v. Townend & Sons Ltd.
Erven Warnink B.V. v. J. Townend & Sons Ltd., [1979] AC 731, [1980] R.P.C. 31, – also known as the Advocaat case – is a leading decision of the House of Lords that further developed common law tort of extended passing off for the commonwealth as originally established in Bollinger v....
(the Advocaat Case) to three elements.
These are:
1) Goodwill owned by a trader
2) Misrepresentation
3) Damage to goodwill
Plaintiffs have the burden of proving goodwill in its goods/services, get-up of goods, brand, mark and/or itself per se.
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 Defendant are that of the Plaintiff; thus, there must be some connection between Plaintiff’s and Defendant’s goods/services/trade. They must show likelihood and/or actual deception/confusion in the public. Deception/confusion, however, does not consider a ‘moron in a hurry’. (See Morning Star Cooperative Society v Express Newspapers Limited [1979] and Newsweek Inc. v. British Broadcasting Corp., [1979] R.P.C. 441 by Lord Denning.) It is the Court's duty to decide similarity/identity of the marks/goods/services the criterion of which often fall under three elements: aural, visual and conceptual similarity (often applied in trade marks infringement cases).
In relation to the element of damage to goodwill, there may be loss/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 insufficient to simply show likelihood/actual deception and/or confusion.
Ultimately, the Court must use common sense in determining the case, based on evidence and judicial discretion, and not witnesses.
Disclaimers may be insufficient to avoid passing-off or cause of action (See Asprey and Garrard v. WRA (Guns) Ltd [2002] FSR 30.) However, this was expressed in the dicta of the decision.
Extended passing off
One of the instances where passing off is actionable is the extended form of passing off, where a defendant's misrepresentation as to the particular quality of a product or services causes harm to the plaintiff's goodwill. An example of this is Erven Warnink v J Townsend & Sons (Hull) LtdErven Warnink v. Townend & Sons Ltd.
Erven Warnink B.V. v. J. Townend & Sons Ltd., [1979] AC 731, [1980] R.P.C. 31, – also known as the Advocaat case – is a leading decision of the House of Lords that further developed common law tort of extended passing off for the commonwealth as originally established in Bollinger v....
[1979] AC 731, in which the makers of advocaat
Advocaat
Advocaat is a rich and creamy liqueur made from eggs, sugar and brandy. It has a smooth, custard-like flavor and is similar to eggnog. In English-speaking countries it generally contains 15% alcohol , but in Continental Europe the typical alcohol content differs from country to country and is...
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
Personality rights
"Personality rights" is a common or casual reference to the proper term of art "Right of Publicity". The Right of Publicity can be defined simply as the right of an individual to control the commercial use of his or her name, image, likeness or other unequivocal aspects of one's identity...
in common law jurisdictions. Common law jurisdictions (with the exception of Jamaica
Jamaica
Jamaica is an island nation of the Greater Antilles, in length, up to in width and 10,990 square kilometres in area. It is situated in the Caribbean Sea, about south of Cuba, and west of Hispaniola, the island harbouring the nation-states Haiti and the Dominican Republic...
) do not recognise personality rights as rights of property
Property
Property is any physical or intangible entity that is owned by a person or jointly by a group of people or a legal entity like a corporation...
. 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 the celebrity or that the use of the likeness of the celebrity was authorised when this is not true.
Reverse passing off
Another variety, somewhat rarer is so-called 'reverse passing off'. This occurs where the defendant markets the plaintiff's product as being the defendant's product (see John Roberts Powers School v Tessensohn [1995] FSR 947). It will be recalled that orthodox passing off entails the defendant representing that his product is the plaintiff's product. In many cases, reverse passing off can be explained under the ordinary rules: for example where a defendant may represent that he or she made goods which were in fact made by the plaintiff so as to pass off his own business as a branch of the plaintiff's.See also
- Dastar Corp. v. Twentieth Century Fox Film Corp.Dastar Corp. v. Twentieth Century Fox Film Corp.Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 , was a copyright and trademark case of the Supreme Court of the United States involving the applicability of the Lanham Act to a work in the public domain.-Background:...
— lawsuitLawsuitA lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
over "reverse passing off" - Perry v TruefittPerry v TruefittPerry v Truefitt 6 Beav. 66 is a famous English case where the tort of passing off was first articulated. Leathart made a hair treatment product. He had shown the mixing process to Perry, a perfumer and hair-dresser, who decided to call the mixture "Medicated Mexican Balm". Perry marketed the...
- PlagiarismPlagiarismPlagiarism is defined in dictionaries as the "wrongful appropriation," "close imitation," or "purloining and publication" of another author's "language, thoughts, ideas, or expressions," and the representation of them as one's own original work, but the notion remains problematic with nebulous...
- Private labelPrivate labelPrivate label products or services are typically those manufactured or provided by one company for offer under another company's brand. Private label goods and services are available in a wide range of industries from food to cosmetics to web hosting...
- White-label product