What is it?
Passing off occurs when a person or business uses another trader’s goods or services and, intentionally or not, tries to pass them off as their own. As the well-known 1842 case of Perry v Truefitt states, “a man is not to sell his own goods under the pretence that they are the goods of another man.” This is not a statutory action but a common law tort which protects traders against another business using their goods or service and leading the public to believe that it is the original, identical brand. The tort of passing off is usually used in relation to unregistered trademarks. In 2013, for example, Rihanna successfully won her passing off claim against Topshop, who was selling t-shirts printed with an image of the singer. Another more recent example was in 2019 when BMW, the vehicle and engine manufacturer, obtained summary judgment against a company who registered in the name of BMW Telecommunications Ltd. BMW Telecommunications Ltd, however, argued that they did not advertise under this name and it was simply used for invoicing purposes.
Who can sue?
Traders including companies, partnerships and sole traders need to prove sufficient goodwill, misrepresentation and damage in order to bring a case. The traders must be able to prove that the public would be confused between the two goods or services, which can cause difficulty as the burden of proof is on the trader bringing the claim. There are various remedies available such as an injunction, or suing for damages.
How can it affect your business?
Although all cases under this action turn on their facts, as demonstrated with the Rihanna case, it is vital that businesses obtain permission if using celebrities or brands for commercial gain. The summary judgement granted to BMW indicated that the company attempting to pass off did not need to trade with the exact name in order to have committed the offence. Additionally, the cases of Rihanna and BMW indicate that the tort of passing off allows an avenue for a remedy, even if the trademark has not been registered, as they highlight that the courts are keen to ensure the wrongdoer accepts responsibility, providing brand owners with security.
To receive expert and tailored advice as to how this will affect your business, please contact Caroline Prunty, Jan Cunningham, Emma Rooney or Ashley Black in our Litigation Team.