What is passing off?
Passing off is a remedy for the enforcement of unregistered trademark rights. The law of passing off prevents one trader from misrepresenting goods or services as being the goods and services of another. It also prevents a trader from holding out his goods or services as having some association or connection with another when this is not true. It is important to note that passing off does not confer monopoly rights to any names, marks. It does not recognize them as property. This is owing to the fact that passing off protects unregistered trademarks. As such, it is not a statutory remedy. It is a common law remedy.
Elements of passing off:
Goodwill owned by a trader:
The plaintiff has the burden of proving goodwill in its goods or services.
The plaintiff has to show misrepresentation or false intention on the part of the defendant. There must be some connection between the plaintiff’s and defendant’s goods, services or trade. There must also be a likelihood or actual deception or confusion among the public.
Damage to goodwill:
There may be a loss or diversion of trade or dilution of goodwill. There must be a real and tangible probability of damage. This damage should, however, be reasonably foreseeable. It is not enough just to show a likelihood or actual deception or confusion.
The plaintiff must establish the following things in a passing off action:
It is essential for success in a passing off action based on the use of a mark that the plaintiff should show that the disputed mark has become distinctive of the plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark will be understood by the trade and the public as indicating the plaintiff’s goods. And also, the mark has become generic.
From the preceding paragraphs, it is clear that even an unregistered trademark may be protected vide the common law remedy of passing off. A registered mark will give rise to a suit for trademark infringement. The main difference between passing off and infringement is that infringement gives the proprietor of the trademark a right to claim for damages, whereas passing off does not give rise to a claim for damages. The plaintiff can only claim for an injunction. Moreover, registered trademark always makes ownership and prior use easier to prove. In an action for passing off, the burden to prove passing off is on the plaintiff. Despite the fact that an unregistered mark can also be enforced, it is always better to get trademark registration to prevent any unnecessary hassles.
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