Executive Summary
Passing off is a common law action protecting goodwill even without trademark registration:
- Nature: Tort action, no registration required
- Classic trinity: Goodwill, misrepresentation, damage
- Proof: Plaintiff must establish reputation
- Remedies: Injunction, damages, account of profits
- Overlap: Can run parallel to infringement action
- Evolution: Extended to various contexts
This guide examines passing off elements, evidence requirements, and litigation strategy.
1. Legal Framework
Common Law Origin
| Aspect |
Position |
| Statutory basis |
None - common law tort |
| Recognition |
Section 27, Trade Marks Act preserves |
| Independence |
No registration needed |
| Evolution |
Judicial development |
Classic Trinity (Jif Lemon/Reckitt Coleman)
| Element |
Requirement |
| Goodwill |
Plaintiff has reputation |
| Misrepresentation |
Defendant deceives public |
| Damage |
Actual or likely damage |
2. Element 1: Goodwill
What Constitutes Goodwill
| Factor |
Evidence |
| Trading reputation |
Business conducted under mark |
| Customer recognition |
Public associates with plaintiff |
| Geographic extent |
Area where goodwill exists |
| Duration |
Period of use |
Evidence of Goodwill
| Type |
Examples |
| Sales figures |
Revenue data |
| Advertising spend |
Marketing investment |
| Customer surveys |
Recognition studies |
| Media coverage |
Press mentions |
3. Element 2: Misrepresentation
Types of Misrepresentation
| Type |
Description |
| Express |
Direct false statement |
| Implied |
Through packaging, get-up |
| Confusion |
Likelihood of deception |
| Association |
False connection suggested |
Test for Misrepresentation
| Factor |
Consideration |
| Average consumer |
Reasonable person standard |
| First impression |
Initial impact |
| Imperfect recollection |
Not side-by-side |
| Overall impression |
Total get-up |
4. Element 3: Damage
Types of Damage
| Damage |
Description |
| Loss of sales |
Diverted customers |
| Dilution |
Distinctiveness weakened |
| Tarnishment |
Reputation damaged |
| Licensing loss |
Potential revenue lost |
Probability Sufficient
| Aspect |
Position |
| Actual damage |
Not always required |
| Likelihood |
Probability sufficient |
| Quia timet |
Preventive action possible |
Beyond Goods
| Context |
Application |
| Services |
Professional services |
| Domain names |
Cybersquatting |
| Characters |
Merchandising rights |
| Endorsement |
False endorsement claims |
6. Remedies
Injunction
| Type |
Availability |
| Interim |
Prima facie case |
| Permanent |
After trial |
| Mandatory |
Removal of offending goods |
Monetary Relief
| Remedy |
Basis |
| Damages |
Compensation for loss |
| Account of profits |
Defendant's gains |
| Punitive damages |
In exceptional cases |
7. Passing Off vs Infringement
Key Differences
| Aspect |
Passing Off |
Infringement |
| Registration |
Not required |
Required |
| Goodwill |
Must prove |
Presumed from registration |
| Scope |
Broader |
Limited to registered mark |
| Burden |
Higher |
Lower |
8. Compliance Checklist
For Plaintiffs
For Defendants
9. Key Takeaways
- No Registration Needed: Goodwill alone suffices.
- Prove Trinity: Goodwill, misrepresentation, damage.
- Evidence Critical: Documentary proof essential.
- Extended Application: Beyond traditional goods.
- Remedies Wide: Injunction and damages available.
Conclusion
Passing off protects business goodwill against misrepresentation even without trademark registration. The action requires proving the classic trinity of goodwill, misrepresentation, and damage. Strong evidence of reputation and customer recognition is essential for success.
