Passing off

Jane Lambert

1 Dec 2016

Passing off is a doctrine that nobody may misrepresent his or her business or its goods or services as those of another by the use of the same or similar trade mark, trade name, get-up or any other identifier. It is a rule that has been developed by the judges in a succession of cases over many years.

The doctrine was expounded by Lord Oliver of Aylmerton in Reckitt and Colman Products Ltd v Borden Inc and Others [1990] UKHL 12 (08 Feb1990), [1990] WLR 491, [1990] RPC 341, [1990] 1 All ER 873, [1990] 1 WLR 491:
"The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by 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 plaintiff."
There are several variations of that doctrine. One variation, known as extended passing off, prevents the use of a geographical description such as Swiss chocolate by a manufacturer from outside that region as in Chocosuisse Union des Fabricants Suisse de Chocolat v Cadbury Ltd [1999] RPC 826. Another known as reverse or inverse passing off arises where one trader claims credit for another's goods or services as in Bristol Conservatories Ltd v Conservatories Custom Built Ltd. [1989] RPC 455.

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