Extended Passing Off

4th December 2017
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Extended Passing Off

In a previous article our passing off solicitors looked at the “classic” passing off claim, which involves a three part test a claimant must satisfy in order to make a successful claim. Case law over the years has expanded and enhanced upon the concept of “classic” passing off and in this article we look at those developments in further detail by focussing on what is often referred to as “extended passing off”.

Extended passing off

The concept of an extended form of passing off developed in response to claims being brought where a number of stakeholders sought to protect the collective goodwill in their products. While “classic” passing off requires three elements to be proven, claimants seeking to prove a claim of extended passing off must address five. The five elements claimants must prove, as articulated by Lord Diplock in the Advocaat case, are:

  • A misrepresentation has been made;
  • The misrepresentation was made by a trader in the course of trade;
  • The misrepresentation was made to customers (actual or prospective);
  • The conduct was intended to injure or harm the goodwill or business of a competitor;
  • The claimant’s goodwill or business was actually harmed by the trader’s conduct.

Unlike classic passing off, extended passing off claims require a claimant to prove that their brand is a clearly defined product, distinct from anything similar. A familiar example is the “Bollinger” case, (J Bollinger SA v Costa Brava Wine Co Ltd [1960] Ch 262), where the Court restrained a product from being sold as “Spanish champagne”. The action was brought by Champagne manufacturers to protect their product from competing products that had not been manufactured in the Champagne region. The principle of “collective goodwill” flowed from this case and is now an important part for any claim made for extended passing off. From Bollinger, the Court now considers any group of traders who produce a product under a particular mark as having a collective interest in protecting the goodwill associated with that product.

While extended passing off claims may only apply to a select group, the development of extended passing off shows how common law has been influenced by the types of claims considered by the courts. Understanding the difference between the types of passing off is critical in being familiar with the rights that you have arising from your interests in a product or business and ensuring that those rights are asserted accurately and successfully.

We hope that you found this article helpful. You can contact us and speak to an expertly qualified passing off solicitor or IP lawyer on a confidential basis if you need assistance.

Intellectual Property & Technology