Avoid problems with intellectual property and stay in control of your business
- Stop competitors imitating your business
- Maintain exclusive brand identity
- Protect business reputation
Passing Off Claims Solicitors
The tort of passing off is one of the unregistered intellectual property rights.
It is all about preventing other businesses holding their goods or services out as that of another business, confusing the market and profiting from it.
In many cases, passing off will often catch the same unlawful conduct protected by registered trade mark infringement.
Passing off however goes further. It catches a wider range of unfair competition and unlawful behaviour than trade mark infringement.
It prevents competitors taking advantage of the reputation and goodwill of another business.
In this area of law, reputation and goodwill is the attractive force which brings in business. That’s the fundamental interest that passing off protects. In the right cases, it protects brands far more widely than registered trade marks.
Passing Off: Role and Purpose
Such is the pressure of competition in markets, competitors sometimes come too close to businesses with trade reputation in markets. Sometimes the competitor knows what they’re doing; sometimes they don’t.
Passing off catches wrongful behaviour whether it’s done intentionally or not.
Competitors are equally liable when they are not aware they mislead the market, as they are when they deceive the buying public.
To obtain the benefit of protection, a protected business needs to show:
- It has reputation. In many cases, it does not take much to establish protectable reputation
- The competitor confuses the public - or there is a serious risk of it – of the source of the product or services, and
- financial loss brought about by a diversion business to the competitor, the reputation of the protected business is diminished, or the competitor says there is a connection with the protected business and there is none.
When markets are confused about the source of the goods or services, the protected business can stop the conduct and recover the financial loss suffered as a result of the wrongful conduct.
Misleading conduct can take any number of forms. For example, when a competitor:
- uses similar visual appearance when promoting a product or service, such as:
- similar packaging, otherwise known as get-up or trade dress
- signs, images or logos which come too close to those of the business which owns the reputation
- business names, brand names
- uses similar or deceptive labelling
- says their services are those of the genuine business
- pretends that it is allowed to use any of the above
- says it’s somehow connected to the genuine business, but is not.
So a competitor’s behaviour is able to be stopped when the competitor:
- gives the impression that its goods or services or its business are those of the genuine business
- says that your business’s goods or services are of a particular type of quality, and they aren’t
- says that it is able to use your business’s trade mark, name, trade dress or other indication of your business, when it’s not true
- states its business is the same or has a relationship affiliated with the genuine business, in respect of the genuine business’s goods or services
- allows buyers to continue operating under a known mistaken understanding or an erroneous belief or assumption that their business is the genuine business, and does nothing to correct it.
Stopping Passing Off
Passing off can be an effective legal action when a business:
- is caught short without a registered trade mark. For example, to recover domain names.
- has a registered trade mark, but business activity of competitors does not infringe the registered trade mark, or is unlikely to
- the competitive activity damages the goodwill of the business.
Passing off can apply in any situation where the goods or services are held out as those of another business, whether intentionally, innocently, by mistake or by design.
Also, any one or more of a group of producers of products, service providers, manufacturers and suppliers which own the reputation may take steps to do something about passing off.
When competitors engaged in passing off are uncooperative and refuse to stop unlawful conduct, passing off is the legal claim which can:
- prevent continuation of the use of the activity which passes off the business
- lead to destruction of offending materials, such as websites, images, logos and brands and products themselves
- give rise to monetary awards to compensate for loss of sales, damage to reputation and profits earned by the passing off
- prevent diversion of sales to competitors
- prevent sales of inferior goods or services which damage the reputation of the business
We have advised clients small businesses in all sorts of industries wanting to protect their trade reputations and unique style in which they do business.
They include small businesses delivering IT products and services, retail outlets, textiles and hospitality services, in respect of exclusivity of branding, domain names and cryptocurrencies.
Passing Off Solicitors
Passing off does not need to be large scale to cause real damage to a business.
Passing off provides good outcomes in cases which qualify for protection. It has developed over centuries to protect businesses which have had the essence of their business taken - or overborrowed – by competitors to catch and stop unfair competition recognised by the law.
We’re able to:
- inform competitors that they are acting unlawfully with cease and desist letters
- advise you whether your business has a viable claim for passing off against competitors
- resist passing off claims which are fictitious, are exaggerated or doomed to fail
- advance defences to passing off claims
- do what it takes to obtain court orders to prevent illegal behaviour from continuing.
Passing off is an especially powerful legal claim which has developed over time to catch and unfair competition in changing circumstances.
Protect your Business Reputation
Need to discuss a passing off claim to protect your business?
Is another business claiming you’re doing the wrong thing and need legal advice?
Call us on +44 20 7036 9282 to discuss your options.