Passing Off – An overview
Passing Off is a common law tort and has no statutory basis. The principle of Passing off is underlined in the case of Perry v Truffit 1842 “A man is not to sell his own goods under the pretence that they are the goods of another man”
The name, mark or get –up of a business is capable of being protected but it must be shown that the owner has goodwill in the name, mark or get-up which the public recognise as denoting quality or character of the goods of that owner.
Passing Off involves a three part test to succeed in an action:
There must be goodwill or reputation attached to the goods or services.
A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods and services offered by the claimant.
Damage to the claimant, by reason of the wrongful belief caused by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same source of those offered by the claimant.
Goodwill is an intangible asset that has been described as “the benefit and advantage of a good name, reputation and connection of a business. It is the attractive force which brings in custom” (Inland Revenue Commissioners v Muller & Co’s Margarine 1901)
The most common form of misrepresentation is where the defendant falsely represents that his goods are the goods of the claimant. The misrepresentation may take the form of an express statement by the defendant to this effect, or may be implied from the use by the defendant of the same or similar distinguishing marks in respect of his goods or services are used by the claimant.
Most importantly- the misrepresentation must relate to the origin of the good and services and not their quality.
The claimant must prove on the balance of probabilities that a proportion of the public would be confused or deceived as a result of the defendant’s misrepresentation.
Confusion does not have to extend to all customers or potential customers but it must be more than a “moron in a hurry” (Morning Star Cooperative Society Ltd v Express Newspapers Ltd  FSR. 113).
The misrepresentation must have happened at the point of sale. It is not enough that the similarity became apparent after the product was purchased as this indicates that the misrepresentation was not in the mind of the purchaser at the time of making the purchase.
A trader must make the misrepresentation in the course of trade. It is not necessary for the two traders to be in direct competition with each other, although the further removed the businesses are from each other the less likely the public are to be confused in to thinking there is a connection.
To bring a successful action for Passing Off the claimant must show that the misrepresentation by the defendant caused damage to his identifiable goodwill or the damage to the claimant’s goodwill is reasonably foreseeable.
If you believe you may have a claim for Passing Off please contact us and one of our expert solicitors will be able to advise you.