If you are using a trade mark for your business or organisation which has not been registered you still have some rights under common law. While it is always best to register your trade mark, unregistered rights receive protection under the tort of passing off. This protects the goodwill that you have accrued through your trading activities within the UK.

Passing off claims are often run in conjunction with claims for the infringement of a registered trade mark, but if the trade mark has not been registered, passing off is often the only available course of action.

What Must Be Proved In A Passing Off Claim?

Claimants have to prove the following in a passing off claim:

  • Goodwill must be established. This is usually easier if the claimant’s business has been trading for several years, but it can possibly be established after a shorter period depending on how much trading activity has been carried out in that time.
  • Misrepresentation to the public by the defendant that is leading consumers to believe that the services or goods that they are offering are those that the claimant offers. Alternatively, the defendant may be leading consumers to believe that they are connected commercially with the claimant’s organisation. It is also essential to prove that the claimant has experienced damage due to this misrepresentation in the terms of either lost sales or intangible damage due to being associated mistakenly with the defendant.

Is It Easy To Succeed In A Passing Off Claim Based On Product Get Up?

Generally, it is difficult to make a successful passing off claim solely based on the get-up of a product. In such cases, the feel, look, or shape of the product has to serve as an indicator of its origin in its own right. It can be difficult to gather the necessary evidence to support a claim of this nature, especially since surveys aren’t generally favoured in the courts.