What is passing off?

Where a mark is unregistered, the owner has to look to the common law for protection and must rely on a passing off action to prevent infringement of his mark. Passing off actions are notoriously time consuming and expensive.

To succeed in such an action, the proprietor must produce evidence of his ownership of goodwill or reputation in the mark, and evidence that the unauthorised use of his mark amounts to a misrepresentation which is causing, or is likely to cause, damage.

Protection of a new, unregistered brand name or mark may be impossible since it may not have attracted sufficient goodwill to support an action for passing off. Gathering evidence to demonstrate that there is a misrepresentation, usually in the form of evidence of confusion is labour intensive and costly, particularly where survey evidence is the only means of showing that there is confusion and market research companies and experts are involved.

An action for passing off is of most use where there is no infringement of a registered trade mark.

By Jane Coyle