passing off
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In common law countries such as the
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United Kingdom
, the
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Philippines
and
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New Zealand
, passing off is a
common law In law, common law (also known as judicial precedent or judge-made law, or ) is the body of law created by judges and similar quasi-judicial by virtue of being stated in written opinions. ' is the most-used legal dictionary used among legal profe ...
tort A tort, in jurisdiction, is a (other than ) that causes a claimant to suffer loss or harm, resulting in for the person who commits the tortious act. It can include intentional infliction of emotional distress, negligence, financial losses, ...

tort
which can be used to enforce unregistered
trade mark A trademark (also written trade mark or trade-markThe styling of ''trademark'' as a single word is predominantly used in the United States and Philippines only, while the two-word styling ''trade mark'' is used in many other countries around ...
rights. The tort of passing off protects the goodwill of a trader from misrepresentation. The law of passing off prevents one trader from misrepresenting goods or services as being the goods and services of another, and also prevents a trader from holding out his or her goods or services as having some association or connection with another when this is not true.


Passing off and trade mark law

A
cause of action A cause of action or right of action, in law, is a set of facts sufficient to justify suing to obtain money, property, or the enforcement of a legal right against another party. The term also refers to the legal theory upon which a plaintiff brin ...
for passing off is a form of
intellectual property Intellectual property (IP) is a category of property Property is a system of rights that gives people legal control of valuable things, and also refers to the valuable things themselves. Depending on the nature of the property, an owner of ...
enforcement against the unauthorised use of a get-up (the whole external appearance or look-and-feel of a product, including any marks or other indica used) which is considered to be similar to that of another party's product, including any registered or unregistered trademarks. Passing off is of particular significance where an action for trade mark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trade mark and the unregistered mark). Passing off is a common law cause of action, whereas
statutory law Statutory law or statute law is written law Torah (; he, תּוֹרָה, "Instruction", "Teaching" or "Law") has a range of meanings. It can most specifically mean the first five books (Pentateuch or Five Books of Moses) of the Hebrew B ...
such as the
United Kingdom The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain,Usage is mixed. The Guardian' and Telegraph' use Britain as a synonym for the United Kingdom. Some prefer to use Britain as shorth ...

United Kingdom
Trade Marks Act 1994 The Trade Marks Act 1994 is the law governing trade marks within the United Kingdom The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain,Usage is mixed. The Guardian' and Telegraph' u ...
provides for enforcement of registered trademarks through infringement proceedings. Passing off and the law of registered trade marks deal with overlapping factual situations, but deal with them in different ways. Passing off does not confer monopoly rights to any names, marks, get-up or other indicia. It does not recognize them as property in its own right. Instead, the law of passing off is designed to prevent misrepresentation in the course of trade to the public, for example, that there is some sort of association between the businesses of two traders. One recent example of its application by the
United Kingdom Intellectual Property Office The Intellectual Property Office of the United Kingdom (often referred to as the UK IPO) is, since 2 April 2007, the operating name of The Patent Office. It is the official government body responsible for intellectual property Intellectual p ...
can be found in a Trade Mark Opposition Decision in 2001. It was held that two brands of confectionery both named "Refreshers", one made by Swizzels Matlow and one by
Trebor Bassett Cadbury, formerly Cadbury's and Cadbury Schweppes, is a British multinational Multinational may refer to: * Multinational corporation, a corporate organization operating in multiple countries * Multinational force, a military body from multipl ...
, which had coexisted since the 1930s, would deceive a consumer as to their source for some items but not for others. Both coexist in the marketplace.


Required elements

When coming to court, there are three elements in the tort which must be fulfilled. In '' Reckitt & Colman Products Ltd v Borden Inc,'' Lord Oliver reduced the five guidelines laid out by Lord Diplock in '' Erven Warnink v. Townend & Sons Ltd.'' (the "Advocaat Case") to three elements: # Goodwill owned by a trader # Misrepresentation # Damage to goodwill The plaintiff has the burden of proving goodwill in its goods or services, get-up of goods, brand, mark or the thing standing for itself. Goodwill normally develops alongside a brand name or brand association. It has been described as "the attractive force by that brings in custom" by Lord Macnaghten in the UK case IRC v Muller & Co.'s Margarine
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AC 217. The plaintiff also has the burden of proof to show false representation (intentional or otherwise) to the public to have them believe that goods/services of the defendant are that of the Plaintiff. There must be some connection between the plaintiff's and defendant's goods, services or trade. They must show likely or actual deception or confusion by the public. It is the court's duty to decide similarity or identity of the marks, goods or services. The criteria are often: aural, visual and conceptual similarity (often applied in trademark infringement cases). For the element of damage to goodwill, there may be a loss or diversion of trade or dilution of goodwill. The plaintiff need not prove actual or special damage; real and tangible probability of damage is sufficient. This damage should however be reasonably foreseeable. It is not enough just to show likelihood or actual deception or confusion. Ultimately, the court must use common sense in determining the case, based on evidence and judicial discretion, and not witnesses. Disclaimers may not be enough to avoid passing off or cause of action.


Extended passing off

One of the instances where passing off is actionable is the extended form of passing off, where a misrepresentation as to the particular ''quality'' of a product or service causes harm to another's goodwill. An example of this is '' Erven Warnink v. Townend & Sons Ltd.'', in which the makers of
advocaat Advocaat or advocatenborrel is a traditional Dutch alcoholic beverage An alcoholic drink is a drink A drink (or beverage) is a liquid A liquid is a nearly incompressible fluid In physics, a fluid is a substance that continuall ...

advocaat
sued a manufacturer of a drink similar but not identical to advocaat, but which was successfully marketed as advocaat. The extended form of passing off is used by celebrities as a means of enforcing their
personality rights The right of publicity, sometimes referred to as personality rights, is the right of an individual to control the commercial use of one's identity, such as name, image, likeness, or other unequivocal identifiers. It is generally considered a prop ...
in common law jurisdictions. Common law jurisdictions (with the exception of
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Jamaica
) do not recognise personality rights as rights of
property Property is a system of rights that gives people legal control of valuable things, and also refers to the valuable things themselves. Depending on the nature of the property, an owner of property may have the right to , alter, , , , , , , , or ...
. Accordingly, celebrities whose images or names have been used can successfully sue if there is a representation that a product or service is being endorsed or sponsored by them or that the use of their likenesses was authorised when this is not true.


Reverse passing off

Another variety, somewhat rarer is so-called 'reverse passing off'. This occurs where a trader markets another's product or service as being his own (see John Roberts Powers School v Tessensohn [1995] FSR 947). It is usually covered by the same court rulings as straight passing off. In the UK, reverse passing off exists where trader A claims that trader B's goods are actually trader A's. Although not expressly endorsed by the courts, reverse passing off was successfully argued by the plaintiff in Bristol Conservatories Ltd v Conservative Custom Built Ltd [1989].


Defences

There are many defences that can be used by a Defendant to dismiss a claim in passing off. The most common are: # Delay or acquiescence # Bona fide use of the defendants name # Concurrent use Delay in the claimants claim for passing off can be used by a defendant as a defence. Mostly, the claimants delay will be fatal to the grant of interim relief by a court. Essential for a Acquiescence defence is that failure of the claimant to act should have induced the defendant to believe that the wrong was being assented too. The second most common defence is invoked where the defendant is trading under their own name. This permits the trader to trade under his name as long as he had not been causing significant deception. Concurrent use requires the defendant to show that he and another trader have acquired the right to use the same name. It has been used successfully whereby both the claimant and defendant trade different goods, as this would not cause confusion within the public.


Remedies

There are several remedies available to a claimant.Charleton, Peter, and Sinead Reilly. "Passing off: An Uncertain Remedy." ''Annual Conference''. 2015. They include: # Injunction # Damages # Account for profits # Destruction # Declaration that the Defendant was passing off goods as the claimants


See also

* Perry v Truefitt * Plagiarism * Private label * Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. – Indian case on passing off in domain names * White-label product


References


Further reading

* Tort law Trademark law Common law legal terminology {{Trademark law