Passing off- in detail

In most situations it is essential to register your mark to gain the best protection. However, there is a way of protecting your mark from infringement without having to submit an application for registration.

Through the common law action of ‘Passing Off’ you can prevent the use of your mark by another without any registration. As the name suggests it applies to situations where the other party is ‘passing off’ the mark as their own.

To succeed in a case of ‘Passing Off’, there is a number of requirements developed through the courts so satisfy.

Firstly, you have to prove the mark in question is yours. Normally this would not be an issue but as the mark is not registered, you need to show it has been created by you. This can be shown through evidence of use stretching across a long time period as well as any documents produced in the development stage of the mark, for example the working drawings of a logo.

Secondly, it needs to be established that the mark has built up a reputation, known as goodwill. Goodwill develops when a consumer can recognise the mark as being distinctive to the claimant. It also includes any positive or negative connotations a consumer would have with the goods. If the mark is seen to be linked to good quality products and has been on the market for a number of years, this is a clear indication of the development of goodwill.

Thirdly, it needs to be highlighted that the mark’s reputation and goodwill have been harmed by the actions of the other party. If the actions of third party in the use of the mark has not been detrimental to an element of the business, passing off cannot succeed. This detriment can be either physically or financially through loss of sales or business, or through the general opinion of its consumers. It could be the use of the mark has given indication that he mark is no longer represents good quality or good service.

Passing off can be a complex process as the requirements needs substantial evidence to aid their success. This can be a drain on time and financial resources.

While this may seem as a way to avoid registering your mark, it will be cheaper and quicker in the long run to action for mark against possible infringement if you submit an application for registration.

Contact The Trademarkroom for any guidance in relation to the registration of trade marks or issuing a claim for passing off.

By Ellis Sweetenham