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Law of Passing OffIP Law

The law of passing off is a common law tort aimed at protecting a business's goodwill from dishonest competitors by preventing misrepresentation that could harm its reputation. Essential elements for a passing off claim include misrepresentation, the existence of goodwill, and actual or likely damage to the business. Unlike trademark infringement, passing off requires the plaintiff to demonstrate their reputation in the market.

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26 views3 pages

Law of Passing OffIP Law

The law of passing off is a common law tort aimed at protecting a business's goodwill from dishonest competitors by preventing misrepresentation that could harm its reputation. Essential elements for a passing off claim include misrepresentation, the existence of goodwill, and actual or likely damage to the business. Unlike trademark infringement, passing off requires the plaintiff to demonstrate their reputation in the market.

Uploaded by

hmjoy9
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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Download as DOCX, PDF, TXT or read online on Scribd
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Law of Passing Off

Dr S M Masum Billah
Associate Professor
Department of Law
Jagannath University
Email: billah002@gmail.com

Introduction

Passing off is a form of tort. The law off passing off, based on common law, has remained
substantially same over more than a century though its formulation has changed over the time.
The object of this law is to protect the goodwill and reputation of a business from the
encroachment by dishonest competitors.

What is passing off


Passing off arises in respect of a common law trademark/name/style for either
goods/services/get ups. The action of passing off is concerned of wrongful appropriation of the
benefit of reputation or goodwill of others. Any misrepresentation calculated to injure another
in his trade or business many provide the basis for a passing off action.

Rationality
The underlying principle of the law of passing off was enunciated in Singer v Loog (1881) 18
CHD 395
No man is entitled to represent his goods of another man, and no man is permitted to use any
mark, sign or symbol, device or other means, whereby, without making a false representation
himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make
a false representation to somebody else who is the ultimate customer.

Present trend
The principle of the law of passing off has been extended and applied to many kind of
business other than trading business. For example, professional associations, the business of
looking after children, organize exhibition, any kind of services and beauty contest. Damages
or likelyhood of damage to good will are the gist of all such actions.
Characteristics
The essential characteristics for a valid cause of action for passing off have been stated by
Lord Diplock in Ervin Warnink v Townend (1980) RPC 31 at page 93 (HL) as follows:
a) Misrepresentation
b) Made by a person in the corse of trade
c) To prospective customers
d) Intended to injure business or goodwill
e) Causes actual damage to business or reputation
Lord Fraser in the above case says: the plaintiff must show______
a) That his business is related to the goods passed off
b) That class of goods are clearly defined and it has distinctive character
c) That because of the reputation of the goods, there is good will attached to the
name
d) That the plaintiff is the owner of the goodwill which is of substantial value
e) That he has suffered or is really likely to suffer a substantial damage to his
property in the goodwill.
In Reckitt and Coalman v Boarden (1990) RPC 341 at 406 (HL), Lord Oliver observes that
the classical formulations of passing off are based on trinity, goodwill, confusion and damage.
Fraudulent intention is not necessary to constitute passing off.

What the plaintiff has to prove in a passing off action?


Firstly plaintiff must prove that a false representation was made. It may have been made
expressly or impliedly. At any rate it is to be established the defendant’s use amounts to be the
imitation of the plaintiff’s. However, Lord Parker in Spading v. Gamags (1915) 32 RPC 273 at
284 (HL) expressed the view that it would be impossible to enumerate or classify all the
possible ways in which a man may make the false representation.
Lord Halsbury in Camel Hair Betting case (1896) 13 RPC 218 at 224 (HL) observed that how
far the use of particular words, signs or picture does or does not lead to passing off must always
be a question of evidence, and the more simple the phraseology, the make like it is to a mere
description of the sold article, the greater becomes proof established the fact the legal
consequence will follow.
Secondly, the plaintiff has to establish that he has acquired a sufficient goodwill and
reputation in a trademark/get up/name/badge/goods/business in Bangladesh. So, it is evident
that reputation of the mark should be in Bangladesh that in foreign country is not sufficient.
The plaintiff needs not to prove that he is the exclusive owner of the goodwill. It may be
shared by others. In the Champagne case (1961) RPC 116, plaintiffs were the champagne
houses of France. They proved that only wine produced by their House is known as
‘Champagne’ in France. And such wine has a great reputation and that the use of the term
’Spanish-champagne’ would deceive by canny person to believe that the wine so described was
champagne. Injunction was granted against the use of the term ‘Spanish-champagne’.
Again there is no requirement that the plaintiff should have a business competing with the
defendant. Though the necessity for a common field of activity was propounded in McCullock
vs Lewis A. May (1984) 64 RPC 58, where the plaintiff’s claim was dismissed for want of this
factor. This was contrary to any authority.
What the defendant is doing has actually caused or is likely to cause deception among the
particular class of customers of the goods or businesses.
The plaintiff has suffered or is reasonably likely to suffer damage or injury to his business or
goodwill. As a consequence of the defendants action. This is an essential ingredients for
passing off. Although proof of actual damage is not necessary. The plaintiff must show that
there is a reasonable probability of his being injured by the defendant’s action. If the defendant
had been using the mark or name for a long time and no damage was shown to have occurred
there could be no reason for supposing that it is likely to occur in the future. But one’s it is
established that the defendant’s action will lead to passing off. It will be presumed that damage
to the plaintiff business will follow as a natural consequence

Distinguish between infringement and passing off


An important distinction between the action for trademark infringement and passing off is that
whereas in passing off it is essential that the plaintiff should by evidence prove his reputation,
this is not necessary for the purpose of proving trade mark infringement.

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