Passing Off

30 November 2009

By Ben Evans

This article looks at the basics of the tort of passing off. Passing off is where trader B gives consumers the impression that his goods are those of trader A who has established goodwill. It does not matter if the mark is registered or unregistered. In comparison to trade mark infringement it is notoriously difficult to show passing off because goodwill must be shown.

The basic test was laid out in the case of Erven Warnink BV v Townend (J) & Sons (Hull) 1979, the follwing must be shown:

1) a Misrepresentation;

2) Made by a trader in the course of trade;

3) To prospective customers;

4) Calculated to injure business or goodwill of another trader;

5) Causing actual damage.

In 1990 the case of Reckitt & Coleman (Products) v Borden Inc reduced the five point test down to a three point test:

1) Existence of goodwill;

2) a misrepresentation;

3) Damage (or likely damage) to the claimants goodwill.

Ben Evans is a trainee solicitor specialising in intellectual property law.