Passing Off Claims

Forbes Solicitors' passing off claims solicitors provide advice on protecting your business from the misappropriation of your intellectual property.

More about Passing Off Claims

Our team can help you to bring claims for passing off, which occurs when a business misrepresents their products or services as being associated with your business, causing confusion in the marketplace. We work with a range of clients, from small businesses to large corporations, to ensure that their intellectual property is protected and their reputation is maintained.

Sometimes, it is not possible for a business to protect its brand via trade mark registration. Usually, this is as a result of a lack of distinctiveness in its trading name or brand and likelihood of association with the goods and services that it provides. It is therefore common that businesses trade via unregistered trade marks, signifying their apparent ownership over that mark with the "TM" symbol. However, this then raises the following question: a third party has been using my unregistered trade mark, what recourse is available to me?

In short, it may be the case that the third party has infringed your unregistered intellectual property rights under the laws of passing off. Unlike registered trade marks (which are primarily governed by the Trade Marks Act 1994), passing off claims have no statutory basis, and are instead based on the historical principle that "A man is not to sell his own goods under the pretence that they are the goods of another man" (Perry v Truefitt (1842) 5 Beav. 66). In more recent years, it has been widely accepted that in order for a passing off claim to succeed, the following must be established:

  • A goodwill or reputation is attached to the goods/services provided by the innocent party;

  • A misrepresentation has taken place by the guilty party, leading ordinary members of the public to believe that the goods/services provided by the innocent party are actually provided by the guilty party; and

  • Damage to the innocent party, caused as a result of the mistaken belief.

Why choose our passing off claims solicitors?

Why choose our passing off claims solicitors?

Our passing off claims solicitors have extensive experience in handling passing off cases and have a proven track record of success. We provide a personalised service to each of our clients, ensuring that their individual needs and circumstances are taken into account. Our team is dedicated to achieving the best possible outcome for our clients and will work tirelessly to protect their intellectual property rights. We offer competitive pricing and transparent communication throughout the entire process.

Who do our solicitors help with passing off claims?

Who do our solicitors help with passing off claims?

We help businesses and individuals who have had their intellectual property rights infringed upon by others through passing off, including trademark infringement, false advertising, and unfair competition. How can our solicitors help with passing off claims?At Forbes Solicitors we can help with passing off claims by providing legal advice and representation to individuals and businesses who believe their intellectual property rights have been infringed upon. We can assist with identifying the elements of a passing off claim, gathering evidence, and negotiating settlements or pursuing litigation. Our team has extensive experience in this area of law and can provide tailored solutions to protect your brand and reputation.

If you need assistance with Passing Off Claims, our team of solicitors has extensive experience and can provide you with expert legal services and support across the country. Don't hesitate to get in touch with us today.

More about Passing Off Claims

Misrepresentation

Once the innocent party has established that it has a goodwill or reputation attached to its goods/services, for a passing off claim to be successful, it must then be established that the guilty party has misrepresented itself as being the provider of those goods/services, causing the public to believe that it is the provider of those goods/services. Importantly, it is not a requirement for this misrepresentation to be deliberate; and it is common for an otherwise innocent misrepresentation (i.e. one that has been made without any knowledge of the existing goodwill/reputation held in the trading name/brand by a third party) to satisfy this requirement, providing of course that the claimant can establish that the public are or may be confused as a result.

Damage

In order for a passing off claim to succeed, the claimant must establish that the defendant's misrepresentation has caused identifiable damage to the claimant's goodwill, or that such damage is reasonably foreseeable. Typically, this element of the claim is based upon a diversion of sales from the claimant's business to the defendant's business and the loss of profits that is caused to the claimant as a result. However, damage to the claimant's reputation and goodwill (as the provider of the goods/services) is also generally sufficient to establish this element of the claim.

Passing Off Claims FAQs

What is a passing off claim?

A passing off claim is legal action that a business (A) can take if they believe that another company (B)is trading by using goods or services that are misrepresenting them. For example, if company B is using almost identical branding or packaging to business A and customers may believe they are buying from business A when in fact it's a totally unaffiliated company B that they are buying from.

Passing off claims can be brought even if company B is unknowingly or unintentionally 'passing off' their goods or services as those belonging to business A.

What do passing off laws protect?

Passing off laws protect businesses from others using their name, logo, or other identifying features in a way that could mislead customers into thinking they are affiliated with or endorsed by the original business. This is based on UK law.

Is there a goodwill or reputation attached to my business’ goods/services?

Goodwill is often described as "the attractive force that brings in the custom", with such being established when a business has a strong trading name and brand, that as a result brings in custom for its goods/services. Unlike registered trade marks, under passing off laws a business' goodwill protects that business as a whole, rather than the individual marks that is uses. Therefore, passing off is concerned with a misrepresentation of that business as a whole, rather than copying of individual goods (albeit, if a third party was to copy your products' unique name or logo, this could be sufficient).

Questions as to whether the innocent party has a goodwill or reputation in its business are assessed on a case-by-case basis. However, where there is an alleged infringement of a potentially descriptive mark, it must be established that ordinary members of the public associate that trade mark with the innocent party and nobody else; this becomes more complex when regional goodwill is considered, and a party is seeking to rely on that regional goodwill against a party trading in a completely different region.

Our intellectual property solicitors can assist you when determining whether your business (or - if it is being alleged that you have passed off your business as being that of another - the opposing business) has sufficient goodwill in order to establish this element of a passing off claim.

What is considered evidence in passing off claims?

In passing off claims, evidence can include proof of reputation and goodwill in a particular trade or industry, evidence of confusion or deception caused by the defendant's actions, and evidence of the defendant's intention to deceive or mislead consumers. Other factors such as the similarity of the defendant's goods or services to those of the claimant and the likelihood of confusion may also be considered.

What are the remedies for a successful passing off action?

The remedies for a successful passing off action include an injunction to prevent further use of the infringing mark, damages or an account of profits to compensate for any losses suffered, and an order for the infringing party to deliver up or destroy any infringing goods or materials.

What is an example of passing off?

Passing off is when a business misleads customers into thinking their products or services are associated with another business. An example would be a company using a similar name or logo to a well-known brand to trick customers into thinking they are buying from the established brand. This is illegal under UK law and can result in legal action being taken against the offending business.

How do I know if someone is passing off my business?

If someone is passing off your business, they are using your business name, logo, or other identifying features to deceive customers into thinking that their business is affiliated with yours. This is illegal under UK law and can be proven by showing that the other business is causing confusion among customers and harming your reputation. You may need to seek legal advice and take legal action to stop the passing off and protect your business.

What are the elements of a passing off claim?

To establish a passing off claim the claimant must prove three elements: (1) goodwill or reputation in the relevant market; (2) misrepresentation by the defendant that is likely to deceive the public; and (3) damage to the claimant's goodwill or reputation as a result of the misrepresentation.

What remedies are available in a passing off claim?

The remedies available in a passing off claim include an injunction to prevent further use of the infringing mark, damages or an account of profits, and an order for the destruction of infringing goods. The claimant may also seek a declaration of their rights and an order for the defendant to publish corrective advertising.

Can I claim passing off if I don't have a registered trademark?

Yes, you can claim passing off even if you don't have a registered trademark. Passing off is a common law tort that protects unregistered trademarks and other forms of intellectual property. To succeed in a passing off claim, you must prove that you have built up a reputation or goodwill in your business or product, that the defendant has misrepresented their goods or services in a way that is likely to cause confusion or deception among consumers, and that you have suffered damage as a result.

Can I claim passing off if the other party is using a similar but not identical name or logo?

Yes, you may be able to claim passing off if the other party is using a similar but not identical name or logo. passing off occurs when a business misrepresents their goods or services as being associated with another business, causing confusion among consumers. The similarity of the name or logo is one factor that may be considered in determining whether passing off has occurred.

How long do I have to bring a passing off claim?

There is no specific time limit for bringing a passing off claim. However, the longer the delay in bringing the claim, the more difficult it may be to prove that the defendant's actions have caused confusion or damage to the claimant's business. It is recommended to bring the claim as soon as possible after becoming aware of the passing off.

What evidence do I need to prove passing off?

To prove passing off you need to show that you have established goodwill or reputation in your business, that the defendant has made a misrepresentation that has caused confusion or deception among consumers, and that you have suffered or are likely to suffer damage as a result. Evidence can include customer surveys, sales figures, advertising materials, and witness statements.

Can passing off be committed online?

Yes, passing off can be committed online under UK law. This occurs when a business misrepresents their goods or services as those of another business, causing confusion among consumers and potentially damaging the reputation of the original business. This can happen through the use of similar branding, domain names, or advertising tactics. The same principles of passing off apply both online and offline.

Can I claim passing off against a foreign company?

Yes, it is possible to claim passing off against a foreign company if they are conducting business and their actions are causing confusion or deception among consumers. The UK law on passing off protects the goodwill and reputation of a business, regardless of whether it is a domestic or foreign company. However, it may be more challenging to enforce the claim against a foreign company due to jurisdictional issues.

Our dedicated Intellectual Property team

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Partner and Head of Department, Commercial

John Pickervance

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Senior Associate, Commercial

Daniel Fletcher

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Associate, Commercial

Katie Lee

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