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Passing off

Passing off is a common law tort, which prevents one person from misrepresenting his or her goods or services as being the goods and services of the plaintiff, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true. Passing off is often used as a form of intellectual property enforcement, particularly for unregistered trade marks or against trade marks whihc are marginally different from registered trade marks.

There are three core concepts of requirements of infringement, namely, reputation, misrepresentation, and damage. This was accepted by the House of Lords in the case of Reckitt & Colman Ltd v Borden Inc (1990) 17 IPR 1, in which the court said:

"First he [the plaintiff] must establish a goodwill or reputation attached to the goods or services...Secondly he must demonstrate a misrpresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are goods or services of the plaintiff...Thirdly, he must demonstrate that he suffers [loss or damage as a consequence]."

See also Con Agra Inc. v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.

The tort does not prevent a defendant from misappropriating a trade mark or product get-up. Instead, it is designed to prevent misrepresentation to the public there there is some sort of association between the plaintiff and the defendant.

Types of misrepresentation include:

  • using the mark of the plaintiff's product

using the get-up of the plaintiff's product

using the plaintiff's advertising theme

using the design or shape of the plaintiff's product.

In addition, there is the extended form of passing off, by which a defendant's misrepresentaion as to the particular quality of a product or services causes harm to the plaintiff's goodwill. An example of this is Erven Warnink v J Townsend & Sons (Hull) Ltd [1979] AC 731, in which the makers of advocaat sued a manufacturer of a drink similar but not identical to advocaat, but which was successfully marketed as being advocaat.

The extended form of passing off is used by celebrities as a means of enforcing their personality rights in common law jurisdictions. Common law jurisdictions (with the exception of Jamaica) do not recognise personality reights as rights of property. Accordingly, celebrities whose images or names have been used can successfully sue if there is a representation that a product or service is being endorsed or sposnsored by the celebrity or that the use of the likeness of the celebrity was authorised when this is not true.