Passing off is a common law tort that protects unregistered trade marks.
It establishes that a trader must not sell their own goods under the pretence that they are the goods of another trader. This means that if you have not registered your trade mark, you may still be able to take action against someone who uses a mark confusingly similar, or identical to your mark on his or her goods or services without your permission. The owner of the trade mark will be able to prevent that conduct by injunction and claim damages for misrepresenting its business as that of the owner of the goodwill.
Passing off is a tort of strict liability: the intention of the person passing itself off as another trader is irrelevant.
To be successful in a passing off action, you must prove that: (a) Another trader has misled prospective buyers into believing that the goods or services of that trader are those of your business, by using a mark that is confusingly similar, or identical to your mark. (b) That you have built up a reputation in the mark. (c) That the use of your trade mark by another trader has caused actual harm in some way to your business or trade reputation (its not sufficient to claim that it is likely to cause harm)
The burden of proof is quite high, and as a result, a passing off action can be quite expensive.
Goodwill may exist in a company name, product look and packaging, branding, in a name of a fictional character; a person's name (“image rights”) and is accrued by trading activity, advertising and marketing activity.
If you register your mark, it is easier to take legal action. This allows you to take legal action against infringement of your trade mark, rather than using passing off.
If you need further advice, contact us here or send an email to your usual trade mark attorney.