What is Passing Off?

Passing Off is entirely based on common law – case precedents – and is an action one would pursue in court at a steep cost.

Lord Diplock – in Warnink v. Townsend – stated that one has to prove 5 elements to succeed in a passing off action.  These are still noted today in the courts but a simpler, 3-stage test provided by Lord Oliver in the Jif Lemon case is now used which states that there must be:

  • Goodwill (established trade.)
  • A misrepresentation (an act by the defendant which causes confusion to the claimant’s customers).
  • Damage (actual or potential damage to the sales or possibly the producers reputation.)

From part 1 of the above test, generally new companies cannot pursue an action for passing off as they would not yet have established trade).

The case of IRC v. Mullern defined goodwill as being the attractive force of a business.

There are different types of misrepresentation including, misrepresenting the quality of the goods being sold (Spalding v. Gamage) and copying the get up of goods (Cadbury Schweppes v. Pub Squash).

Commonly the courts will only agree that there is confusion when the two parties work in similar fields of expertise.  The case of Wombles v. Wombles Skips found that there could be no passing off action as the defendants were using the name to run a company removing skips, this is not at all what the Wombles programme was about and so there could be no confusion.  

A defence that someone can have for using the same name as another established company can be that the name of the company is their own name, this has to be the name that you were born with, however, for example, someone born with the name Ronald McDonald could open a namesake fast food restaurant.

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