Your business invests considerable resources into forming and sustaining your brand. However, what should you do when another business attempts to unfairly utilise your reputation or goodwill? The common law concept of passing off will assist you in protecting against your brand / business from these “free riders”.

What is Passing Off?

Passing off is a legal principle which assists businesses with protecting their brand’s reputation and goodwill against unfair competition. It seeks to prevent third parties from passing off their goods or services as those of another, which could lead to confusion among customers and result in loss for the original brand.

Elements of Passing Off

To establish a claim of passing off in England & Wales, three elements must be met:

1. Goodwill: Goodwill refers to the reputation or connection that a business has nurtured with its customers over a period time. To evaluate goodwill, factors such as: brand recognition, customer loyalty, and the quality of products or services offered are considered.

2. Misrepresentation: Misrepresentation in this context is when a third-party business falsely represents its goods or services as those of the claimant. Misrepresentation can be evidenced via the use of similar packaging, branding, or materials, leading customers to wrongly believe they are purchasing from the originating brand.

3. Damage: The claimant must illustrate that they have suffered or are likely to suffer damage as a result of the misrepresentation by the third-party. The damage could include loss of sales, harm to reputation, or a demonstrable loss of the brand’s distinctiveness.

Protecting Your Brand

The best way to protect your brand is to be proactive and there are various steps you can take:

• Trademark Registration: An application to register your brand’s name, logo provides protection against passing off. Trademark registration secures a legal presumption of ownership and exclusive rights to use the mark in connection with specific goods or services according to the class of use as per its registration.

• Monitoring and Enforcement: Observe the market regularly for potential passing off undertaken by any competitors. If you uncover any examples of misrepresentation, take urgent action to address them through correspondence, negotiation, or as a last resort, legal proceedings.

• Maintaining Quality and Reputation: Continue to adhere to a recognisable quality and reputation of your products or services. Continuously providing value to your customers reinforces your brand’s goodwill and makes it less prone to passing off by competitors.

Conclusion

In conclusion, passing off is a vital legal tool for businesses to protect their brands from unfair competition in England & Wales. By understanding the above including taking proactive steps to protect your brand’s reputation and goodwill, you can mitigate the risks of misrepresentation. If you have concerns about passing off or need assistance with protecting your brand, please do not hesitate to contact Mario Mastantuono at Fisher Jones Greenwood LLP –   [email protected] or 01245584517.