Passing off- what do you need to know

Passing off is a common law action which can allow you to take steps in preventing others from using a trade mark you have developed but have not registered. It can also be an action taken in relation to registered mark, however, a case of registered trade mark infringement will be the best course of action.

The key to a successful case of passing off, is the requirement for someone to be ‘passing off’ your mark as their own.

To be successful there are a number of requirements you need to satisfy:

1. You need to prove that the mark belongs to you and you created it as an original. A high level of evidence is need to prove this.
2. You also need to prove that you have built up a reputation using the mark. This is known as goodwill. Goodwill develops when a consumer can recognise the mark as being distinctive to you.
3. Finally, you need to show that the previously proved reputation and goodwill has been directly harmed through the use of it by the other party. It needs to be detrimental either financially, physically or the changing of consumer opinion.

While this may seem a way to avoid registering your trade mark but also having protection, passing off requires a high level of evidence to be successful. Therefore, it is a very expensive and time consuming process.

The Trademarkroom would advise you to not have to rely on passing off and register your trade mark to ensure guaranteed protection in a cost effective way.

To get started, get in contact with Jane Coyle.

By Ellis Sweetenham