Passing Off: Is It Too Late For Me To Protect My Brand?

passing off

Is it too late for me to protect my brand? In this article, we look at what passing off is and how long it lasts. While passing off can be overlooked as a means of brand protection, we also look at why trade mark registration remains vital for your business.

What is Passing Off?

The common law tort of “passing off” is available in the United Kingdom to protect the use of unregistered trade marks and goodwill, such as business names, logos, internet use and product packaging. In the classic case of passing off, a business adopts a trading name, logo or packaging which customers associate with an existing business. Customers are mistaken into thinking they are buying from the business they associate with these distinguishing features. Passing off occurs online as well as offline and often causes reputation as well as financial damage to the senior user of the name, logo or packaging.

How long does Passing Off last?

Passing off arises automatically so no registration is required, and it can last indefinitely provided the business can demonstrate a trading reputation for the period of goodwill being claimed.

Why you need to protect your brand early

Relying on the law of passing off is a notoriously unpredictable way of protecting your brand. Although you may have been trading for a number of years, you must prove all of the following to succeed with a claim of passing off:

  1. Goodwill – you can show that the sign is yours and that your business has customers in the UK;
  2. Misrepresentation – typically, someone else has represented that their business is the same as or connected to your business, to an extent sufficient that consumers will be confused; and
  3. Damage – this will usually follow provided you can show that your business has goodwill and that a misrepresentation has been made. It can include damage to reputation and financial loss.

Not only is this a risky and expensive strategy, the claim can also prove challenging because it ultimately depends on the quality of your evidence. Your business may have changed the appearance or wording of its original branding over time and, as a result, such unregistered rights may well have been lost.

Recent passing off judgments have shown that courts are reluctant to reach a finding of passing off even where the brand owner has been able to show that the other business has deliberately designed its product as a lookalike that ‘winks to’ the branded product.

Therefore, the prospect of raising a successful passing off action to recover your brand can never be guaranteed. Securing a registered trade mark for your business avoids the unpredictability of relying on unregistered rights, because no evidence of goodwill, misrepresentation or damage is required. While passing off should never be ignored, it is never too late to protect your brand as a registered trade mark and you should do so as early as possible.

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