Passing off explained
Published 13.07.11 at 16:37
The law of passing off is a complicated business but it needs to be considered where trade marks have not been registered.
Where you believe that someone is unlawfully using your (unregistered) trade mark, there are three elements that you have to prove if you want to show infringement (and convince that other party to stop using it). These are goodwill, misrepresentation and damage.
The recent case of Redwood Tree Services v Redwood Tree Surgeons is helpful in elaborating on these points.
Both parties ran tree surgery businesses in Surrey.
The court held that as the claimant had been operating in the Guildford area since 2004 he had a small amount of goodwill in that area.
Where the defendant traded in that same area under "Redwood Tree Surgeons", the public were likely to believe that goods or services offered by his business were those of the claimant's business = misrepresentation.
Because the claimant was likely to lose sales to his competitor it was held that he had or was likely to suffer damage.
And so the claimant's claim was successful.
This is a relatively simple claim of passing off but is a helpful illustration of how the individual aspects are broken down.
For more information on unregistered trade marks see our FAQ - What does TM mean?
Article by Joe Walsh
Photograph (some rights reserved) by Ostrosky
Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.