Recap – Passing Off and a Cease and Desist Letter

Passing off is prevalent in the UK and we consistently receive enquiries asking the best way to deal with someone passing themselves/ a company or brand off as that of the owner. It is not simple to fight but it is possible to settle a dispute by reminding the infringer of the owner rights and explain in a letter that it is not legal.

The test to show passing off involves three-parts (see Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341):

(1) goodwill or reputation attached to the goods or services;

(2) 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 it are the goods or services of the claimant; and

(3) damage to the claimant, by reason of the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant.

Ultimately the infringing party is free riding off the goodwill which may lead customers use the infringing parties’ goods and/or services or lead the public to think that there is an association between the two parties and creating confusion. This is the essence of passing off and the acts are unlawful.

The remedies available may be:

(i) an injunction;

(ii) an inquiry as to damages, or an account of profits;

(iii) delivery up or destruction upon oath of all infringing/unauthorised materials;

(iv) costs; and

(v) other relief.

If you consider that your rights are being infringed, we can draft a cease and desist letter outlining the law, your rights and how the infringing party is specifically infringing on those rights and the consequences. It is usual for us to include a letter of undertakings for the infringing party to sign and return agreeing to desist from infringing as well as paying costs. It is not unheard of for the infringing party to seek legal advice and just agree to the terms, but it usually requires two letters and a handful of corresponding emails or telephone calls before the matter is agreed.

Do not hesitate to contact us if you require any further advice on Passing Off, trade mark Infringement and would like a fixed quote for us to draft a cease and desist letter on your behalf.

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