Passing Off IP Protection Guidance

Passing Off Guidance Notes

BS.IP.GN.03

The common law tort of passing off represents a valuable and useful tool for the protection of business names, logos, trade dress and get-up. In particular, it can be helpful in protecting names and logos that have not been registered as trade marks.

These Passing Off Guidance Notes have been designed to explain the tort of passing off and its constituent ingredients, namely the requirements of goodwill, misrepresentation, and damage. Whilst not intended to serve as a substitute for legal advice, these guidance notes are designed to provide a clearer understanding of the action of passing off. This will give businesses a better idea of what to expect should they find themselves in a situation where they may need to use the action and, just as important, of how to avoid inadvertently finding themselves on the receiving end.

Passing off is explained in these guidance notes under the following headings:

1. Introduction
2. The Ingredients: The Classic Trinity
2.1. Goodwill
2.1.1. Goodwill in Names, Logos, Get-Up
2.1.2. Building Up Goodwill
2.1.3. Location, Location, Location
2.1.4. Ownership of Goodwill
2.2. Misrepresentation
2.2.1. Does Misrepresentation Have To Be Deliberate?
2.2.2. Does There Need To Be A Common Field Of Activity?
2.2.3. The Effect Of Misrepresentation
2.2.4. Evidence
2.2.5. Timing
2.2.6. Assessing Misrepresentation
2.2.7. Descriptive Words – A Warning
2.3. Damage
3. Practicalities and Conclusions

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