Passing off in the UK: a brief overview of what a claimant must prove

Passing off in the UK

Below our passing off solicitors look at the basic requirements of a successful passing off claim.

Passing off can occur when one person misrepresents that a product or service is their own, when it in fact belongs to someone else. Historically, fraud was required to be proven in order to successfully establish a passing off claim, but that is no longer the case.

The “classic” passing off claim involves a three-stage test – described by Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc as the “holy trinity” – which we look at below. There is also a more elaborate passing off claim, known as “extended passing off”, which we look at in a related article.

Goodwill associated with the product or service

The first thing that a claimant must establish is that he owns goodwill in his product or service.
Goodwill is generally considered to be “…the benefit and advantage of the good name, reputation and connection of a business”. It can reside in the names, logos or colours that distinguish a business and attract customers. It is a form of property, albeit intangible property, so it can be assigned to a third party or disposed of in a will. Courts in the United Kingdom have found, and generally continue to find, that businesses in their jurisdiction cannot exist without at least some form of goodwill.

Misrepresentation by the defendant (intentional or not)

The second thing that a claimant must establish is that the defendant has misrepresented to the public that his products or services are those of the claimant or connected to those of the claimant.

Commonly, misrepresentation involves a defendant imitating aspects of the claimant’s goodwill – such as a logo or product packaging – thereby representing that the defendant’s products are genuine products made by or authorised by the claimant. The misrepresentation may be implied or occur via a direct statement. For a claim to be successful, the claimant does not have to prove that the defendant intended to mislead the public or that the defendant engaged in an act of fraud. However, the claimant does have to prove that, on the balance of probabilities, a proportion of the public would be confused or misled as to which product or service was the claimant’s.

Damage arising from the defendant’s misrepresentation

Thirdly and lastly, the claimant must prove that there has been damage to his goodwill as a result of the defendant’s misrepresentation. That damage may include loss of sales due to the public buying the defendant’s products in the mistaken belief that they are products of the claimant, or damage to reputation for the product not being of the same quality as the claimant’s.

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