What is passing off?

What is passing off?

Passing off is all about protecting your brand’s reputation. The basic idea is simple: no one has the right to make their goods or services look like someone else’s. If someone tries to pass off their product as yours (whether through packaging, branding, or general presentation) you can take legal action to stop them and claim compensation for any damage caused. Rather than giving the owner of the goodwill a monopoly in a mark or get-up; passing off protects the trader’s business against a certain type of “unfair competition”, broadly speaking.

It’s a helpful legal tool, especially where there’s no registered trade mark, or even as a back-up when a trademark claim doesn’t quite cover everything. Unlike trade marks, passing off is an unregistered right, so there’s no official database you can be listed on. That makes it flexible, but also a bit harder to prove.

Actions in passing off are available to all types of traders, including companies, partnerships and sole traders.

When does passing off apply?

Passing off arises when one business mimics another’s branding, packaging, or general “look and feel” to confuse customers. This can be deliberate or accidental. Intention isn’t essential, but it might affect how much compensation is awarded.

To bring a successful “Classic” passing off claim, three things need to be shown:

Goodwill

This means your brand or business has built up a reputation that customers recognise and trust in relation to your goods and services. That reputation could be linked to:

• A business or product name;
• A logo, colour scheme, or shape of packaging; or
• Any distinctive feature customers associate with your business.

There’s no strict limit to what can count. Courts have even accepted parody products in passing off cases. However, not every brand element will qualify; some may need trade mark protection instead.

Misrepresentation that causes confusion

The next step is proving that the other party has misled customers, at the point of sale, into thinking their product or service is yours, or is somehow linked to you (misrepresentation must concern the origin (source) of the goods or services and not their quality). This is usually done through similar branding, packaging, or taglines or slogans.

Misrepresentation doesn’t have to be deliberate. Even if someone copies your brand without knowing, they can still be liable.

There also needs to be a clear overlap in trade, meaning the businesses are in the same or similar industry, or operating in the same area. A local café isn’t likely to confuse customers of a national tech brand, for example.

Confusion or deception is a question of fact to be decided in all the circumstances. To strengthen a case, evidence of customer confusion (such as surveys or actual complaints) is often key. There is no specific amount of customers that must be potentially confused, the claimant only needs to prove that a proportion of the public would be confused or deceived as a result of the defendant’s misrepresentation.

Damage

Finally, you need to show actual harm or at least the risk of it. This could include:

• Loss of sales or profits;
• Harm to your brand’s reputation or injurious association;
• Erosion of goodwill; and/or
• Loss of future business or difficulty expanding into new markets.

Without some form of damage, a passing off claim won’t get very far.

Remedies for passing off

If you can prove all three elements, you could be entitled to several remedies, including:

• A court order (injunction) to stop the infringing activity;
• Damages (even in innocent cases);
• An account of the profits made by the infringer;
• Repackaging or destruction of the offending goods;
• A legal declaration of your rights.

How Moore Barlow can help

At Moore Barlow, we offer expert legal advice with a personal touch. Our team of experienced commercial and technology lawyers is committed to delivering practical, responsive, and forward-thinking support for your business.

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