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Passing Off

Passing off disputes

Passing off disputes – expert London solicitors

South Bank Legal’s intellectual property lawyers have successfully acted in passing off claims on behalf of both claimants protecting their brand goodwill and defendants accused of passing off.

The law of passing off prevents unscrupulous traders from unlawfully “riding on the coat tails” of businesses with goodwill and brand reputation often built up over years of hard work and advertising expenditure. Traders are prevented from misrepresenting their goods or services as being somehow connected to the goods and services of another (by, for example, using deceptively similar get up or packaging). A passing off claim is distinct from a trade mark infringement claim, in that no registered trade mark is required to be held by the claimant in a passing off claim.

To succeed in a claim for passing off a claimant must generally prove three things:

  1. The claimant has goodwill or reputation in respect of its goods or services.
  2. Another party has made a misrepresentation that confuses members of the public into associating that party’s goods or services with those of the claimant.
  3. As a result of the above, the claimant has suffered damage.

An often cited example of a successful passing off claim is Easyjet Airline Co v Dainty (t/as Easyrealestate). In this case the defendant, Mr Dainty, set up a website called “easyrealestate.co.uk”. Easyjet successfully sued Mr Dainty and won because the defendant Mr Dainty had clearly set up his website in a very similar style to the Easyjet website. Although the Court did not say that Easyjet had a monopoly over the word “easy”, it was found that the use of that word by Mr Dainty, combined with the similarity between the two websites, amounted to the necessary misrepresentation and Mr Dainty was therefore liable for passing off.

The claimant in the Easyjet case succeeded and rightly so. However our passing off solicitors see many large companies making unsustainable allegations of passing off against their smaller competitors in order to eliminate or stifle competition. Our UK passing off solicitors can fight the corner of innocent traders in these circumstances and we have time and again successfully managed to stave off unjustified court proceedings.

Passing off – financial and non-financial remedies

A successful claimant in a passing off claim will generally be entitled to:

  • a non-financial remedy, in the form of an injunction granted by the court prohibiting the defendant from engaging in any further passing off conduct; and
  • a financial remedy, namely an award of damages or alternatively, payment of a sum on account of the profits generated by the passing off.

If you have received a letter before claim alleging passing off, or are looking to prevent competitors from taking advantage of your valuable brand goodwill, you would benefit from speaking to a dispute resolution solicitor. Please feel free to contact South Bank Legal today for a confidential discussion.

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