Passing off allows a trader to stop another trader selling his goods or services unfairly by making use of the claimants reputation. It can happen in a number of ways, it is mainly used as an additional remedy to trade mark infringement claims, and will sometimes succeed where the trademark claim does not.
The three elements of passing off:
Good will: In the context of business reputation. This provides an advantage of giving the business a good name as well as maintaining a good name when dealing with other businesses. The business reputation is shown to the court and this can be accessed through sale figures, advertising, and survey evidence. What the claimant needs to show is a distinguishing factor that can establish an old and new business.
Distinguishing factors could be:
- Logo, shape or style of packaging, colour. For example Chanel perfume (logo, sophisticated design)
- A name, a defendant may be restrained in using a specific name therefore it has to be changed to avoid clashes.
An example is demonstrated in Riddle v United Service Organisation Ltd  LTL AC9100218, the claimant was the son of Nelson Riddle a composer and orchestra leader they had last toured in the United Kingdom in the 1960’s. It was held that there was no goodwill remaining after the 40 years, thus the son could not maintain a passing off claim against the defendants who ran an orchestra called Nelson Riddle Orchestra UK.
Misrepresentation, leading to confusion-There must be a misrepresentation, which is deliberate. However, in some cases this can be done innocently, the defendant does not need to be aware of the claimant’s products; but intention to misrepresentation isn’t an essential element made by the defendant when trading takes place.
As reflected in United Biscuits (UK) Ltd v Asda Stores Ltd  RPC 513,m also known as the ‘Penguin and Puffin’ case which concerned the similarity of product design between the Penguin Biscuit and Asda’s own Puffin biscuit. Branding and advertising was very similar it was clear that Asda tired to make a reference to the Penguin chocolate, passing off was easily established.
The misrepresentation must lead to confusion and normally it must be confusion as to trade source. A case of passing off will not succeed without evidence of confusion. This is required to take place at the point of selling takes place or before. They may be fooled into thinking that the defendant’s products came from the claimant or that they are associated with the claimant. As in First Conference Services Ltd v Bracchi  EWHC 2176, the former employer of the claimant attempted to pass off conferences organised by him as those of his old employer. He did this by stating that the speakers would be ‘previous speakers’ i.e. those at the conference organised by the claimant the year before, he had also mislead the speakers as to the identity of the true organised of the conference.
The removal of a distinguishing feature can result in an unintentional misrepresentation. In some cases there may be an overlap between alleged infringer and the proprietor in that there is a ‘common field of activity’ in respects of the types of goods or services, geographical area and time. Unless there is a common field of activity this can be difficult to identify.
Damage: The claimant must show damage due to misrepresentation that had occurred. Lost customers, future custom, damaged reputation or reduced effectiveness of marketing and promotion because of the passing off, intentional or not.
Types of damages:
(a) Loss of profits- people buy the infringing product instead of the claimants product; and
(b) Loss of reputation- because of the infringed product is of inferior quality and the customers think the product is made by the claimant.
If the infringer is in a different field of activity, the claimant might not succeed because he/she cannot show damage. As in Stringfellow and Another v McCain Foods GB Ltd and Another  RPC 501, the nightclub was not able to stop oven chips as being sold under the name ‘Stringfellows’. Other problem areas involving passing off and damages, is the requirement for the re-labelling and repackaging of goods by parallel importers within the EC.
There are also defences and remedies available for passing off.
By Tahira Amin. Tahira is a university student carrying out work experience here at Lawdit.