What is ‘Passing Off’ in Trade Mark Law?
Emily Young
A trade mark is an excellent way to protect your business intellectual property (IP). It provides an avenue to stop others from using your brand without your consent. However, suppse you do not have a registered trade mark. In this case, you will have to rely on a claim that your goods or serves have been ‘passed off’. This article will take you through what passing off is and its intersection with trade mark law.
What is Passing Off?
‘Passing off’ refers to other businesses misrepresenting your goods, services or brand as their own. In Australia, passing off is considered a common law tort. Therefore, Australian businesses have protection against this regardless of their trade mark status. The primary purpose of this protection is to prevent damage to the reputation and goodwill of a business.
In the context of trade marks, passing off occurs where someone without a registered trade mark finds that another business is passing off their brand as their own. In instances where you have a registered trade mark, this is considered trade mark infringement.
Proving Passing Off
It is much easier to prove the act of ‘passing off’ where you have a registered trade mark. This is because you merely need to show that you have a trade mark and that someone has been misusing your trade mark. However, in instances where you do not have a trade mark registered, you will need to show that you have suffered damage to your reputation.
There are three critical things you will need to show to be successful in a passing off claim. You can find these in the table below:
| Misrepresentation | The infringer must misrepresent your brand in a way that is likely to deceive customers. This means that the infringer must substantially copy the entire brand in the same categories of goods or services. You will need to show similarities between the two conflicting trade marks to prove misrepresentation, such as through a visual or conceptual comparison. |
| Reputation | Your brand must have a reputation in the same geographical area where the disputing party attempts to pass off your goods or services. For example, an international company that is not known in Australia will have difficulty proving this. To demonstrate your business’ reputation in the field, you will need to provide evidence such as company records or financial statements to show an ongoing market presence. |
| Damage | Your brand must suffer damage to prove passing off successfully. This damage will need to be to your reputation. To prove damage to your reputation, you will need to either show that the opinion of your brand has been tarnished, that you have lost revenue due to this damage, or that this will likely occur. |
Remedies
The critical benefit of trade mark registration is the exclusive rights to the use of your trade mark, including the ability to enforce your trade mark rights. This means if you consider a business is misrepresenting your goods or services, you can take measures to stop them.
You may send a cease and desist letter requesting the offending party stop passing off your brand. If this is unsuccessful, you will be able to take it to court. The most common remedy is an injunction, which is an order from the court requiring the offending party to stop the passing off.
You will have to satisfy the three elements mentioned above before accessing these rights where you do not have a registered trade mark.
Key Takeaways
A critical advantage to trade mark registration is the right to prevent others from using your trade mark. If you do not have a registered trade mark, you will need to establish three key elements to access these enforcement rights. These elements are that:
- somebody has misrepresented your goods;
- your reputation has suffered damage as a result; and
- you have incurred damage because of the passing off.
If you need assistance enforcing your trade mark rights, our experienced trade mark lawyers can help. You can get in touch with them on 1300 657 423.
Frequently Asked Questions
‘Passing off’ refers to other businesses misrepresenting your goods, services or brand as their own. In Australia, passing off is a common law tort, which means that Australian businesses have protection against this even without a registered trade mark. However, it is easier to establish that your brand has been misrepresented with a registered trade mark.
A key element of trade mark registration is that it grants you exclusive rights to the use of your trade mark. This includes the right to use and commercialise your trade mark, extending to the ability to enforce your trade mark rights. This means if you consider a business is passing off your goods or services, you can take measures to stop them.