“Passing off” is a law tort which protects unregistered trademarks. The basic idea of passing off is that a trader cannot represent his or her product the same as another person’s product. This prevents a misrepresentation that can cause a lot of damage to a business’ goodwill and reputation.

There are three elements in the tort; in order for action to be taken the plaintiff must produce evidence of each:

GOODWILL or reputation in a specific section of the workforce.

Goodwill is an intangible asset and cannot exist separately from the business. It includes customer loyalty, brand value and reputation. If a passing off action is to succeed, the plaintiff must prove that his or her product, brand, mark and/or the business itself are distinctive from others. This is done by showing that consumers recognise this particular characteristic as belonging to that trader. For example when we think of a tick we think of Nike.

The plaintiff must then also prove how there has been a misrepresentation by the defendant. A connection between the two businesses must be established and a resulting consumer confusion or deception has to be demonstrated.

MISREPRESENTATION by another party.

The law of passing off is designed to prevent misrepresentation to the public. Direct statements or providing one product when asked for another, are two forms of misrepresentation. However the most common form of misrepresentation is mimicking or having a similar brand, mark or name that has become distinctive of the plaintiff.

Once goodwill has been established and misrepresentation has been conveyed, the question of whether or not the defendant’s actions have resulted in, or pose the threat of damaging the goodwill of the plaintiff must be answered.

DAMAGE or threat of damage to the plaintiff’s goodwill.

There can be varying forms of damage which can activate the law depending on the kind of goodwill and the types of resulting confusion or deception. Therefore, the nature of the damage will be dependent on whether it involves rival traders or promotional goodwill. For example, tarnished goodwill may be a resulting damage where the plaintiffs and defendants goods, services or businesses are very similar however the defendant’s goods or services are of inferior quality or their business dealings are of a questionable nature injuring the plaintiff’s goodwill.

Here at The Quinn Group we can assist you with your queries regarding Intellectual Property and passing off. Click here to submit an online enquiry or us on 1300 QUINNS (1300 784 667) or on +61 2 9223 9166 to book an appointment.