What is passing off?

Passing off occurs when a person or business misrepresents their goods or services as those belonging to (or associated with) another person or business. Whether deliberate or accidental, such acts can mislead consumers into believing they are doing business with someone else, which can cause material damage to the other party’s goodwill, reputation, or finances. 

If another trader passes themselves off as you or your business, or vice versa, the situation can be complex and costly to remedy. To help you avoid or address such acts of misrepresentation, we explain the basics of passing off and the steps you can take to protect your business. 

The law of passing off in the UK 

In the UK, passing off is established through case law (i.e. common law or judicial precedent) rather than specific legislation enacted by parliament. Its primary purpose is to protect unregistered trade marks—such as names, logos, and designs—by preventing others from using the same or similar marks in the course of business. 

This false representation can deceive the public into believing they’re dealing with someone else or purchasing products belonging to (or affiliated with) another party. By ‘passing off’ goods or services as those of another business, the infringing party is piggybacking off that business’s established goodwill and reputation. 

Passing off can arise in several ways, for example, when one party: 

• Uses a business name, slogan, logo, design, or ‘get-up’ (overall appearance or ‘trade dress’) that is the same or very similar to that of another business selling the same or similar goods 
• Wrongly asserts or suggests that the work carried out by another business is their own 
• Re-sells someone else’s products as their own 
• Produces or sells imitation goods or services 
• Falsely claims that their products are made or provided using another party’s technology or under license from another party 
• Misrepresents their business or products as being connected to (or endorsed by) someone or something else 

In these situations, one party is potentially taking commercial advantage of a competitor’s reputation for their own gain. This can make it easier for them to enter a particular market, enhance their reputation, attract new customers, or increase sales at the expense of another party.

Such infringements may be intentional or unintentional. Nevertheless, intent or lack thereof has no bearing on whether an act of passing off actually occurs. This is something you should be aware of when running your own business. 

The Jif Lemon case – an example of passing off

The classic case of Reckitt & Colman Products Ltd. v Borden Inc. [1990] is perhaps one of the most famous examples of passing off. It is more commonly known as the Jif Lemon case. 

The claim arose after Borden, a US-based company, entered the UK market in 1975 and later began selling its lemon juice product, RealLemon, in a plastic container moulded in the shape of a lemon. However, the UK firm Reckitt & Colman had been selling Jif lemon juice in a similar lemon-shaped container in the UK since 1956. 

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The situation concerned Reckitt & Colman since UK consumers associated the distinctive container with the Jif brand of concentrated lemon juice. Consequently, Reckitt & Colman brought a claim of passing off against Borden to protect Jif’s reputation and position in the market. 

To support the claim, Reckitt & Colman produced survey evidence demonstrating that consumers would be likely to pick up RealLemon and mistakenly believe they were purchasing Jif lemon juice. 

The House of Lords found in favour of Reckitt & Colman, imposing a permanent injunction prohibiting Borden from marketing its RealLemon product in lemon-shaped containers in the UK. 

Why is passing off damaging?

Passing off can cause considerable damage to a business whose rights are infringed upon through misrepresentation by another party. Most notably, it can: 

• Cause reputational damage due to the infringing party selling inferior products that are mistakenly attributed to the other business 
• Confuse the public, which may deter potential or existing customers from purchasing the goods or services from any party 
• Lead to a loss of sales and profit as a result of the infringing party diverting trade away from the other business 
• Restrict a company’s scope to expand due to the other party’s unlawful actions 
• Create problems when the business attempts to license its own mark 
• Minimise the appeal or exclusivity of their established products or brand 

The civil courts recognise these types of damages. However, passing off claims and the resulting impact of misrepresentation are often challenging to prove. Moreover, taking action or defending a claim can be time-consuming and expensive.

Establishing a claim of passing off 

To make a successful claim of passing off against another party, the following three elements must be established: 

1. Goodwill – that the claimant has built up a reputation or goodwill attached to a distinctive mark that the public associates with their business, products, or services. 
2. Misrepresentation – that the defendant has deceived or misled the public by misrepresenting their goods or services as belonging to, or being associated with, the claimant, which has influenced or is likely to influence a consumer’s decision to purchase. 
3. Damage – that the defendant’s misrepresentation has damaged or is likely to cause damage to the claimant’s goodwill, leading to reputational harm or a loss of trade or opportunity. 

This is sometimes called the ‘classic trinity’ of reputation, misrepresentation, and damage. It is now the most common test used to establish whether or not passing off has occurred. Lord Oliver first set out the framework in the Jif Lemon case. 

However, making a claim for passing off can be complicated because the claimant has the evidential burden of proof. They must be able to prove through market research and commercial data that they have established a reputation or goodwill in the relevant marketplace. These types of rights build up over time and can be difficult to define. 

The claimant must also provide evidence of the defendant’s deception and/or the resulting confusion caused to consumers, typically through both parties’ promotion and sale activities. This enables the judge to analyse the wrongdoing in question and draw conclusions on any similarities. 

Common passing-off defences 

In a passing-off case, the defendant may challenge the claim with findings contrary to the claimant’s evidence. Depending on the basis of the claim, they may argue that: 

• There is no proof of misrepresentation 
• Misrepresentation did not occur in the course of trading 
• The mark in question is generic 
• The mark is not distinctive enough to amount to passing off 
• Their business or products amount to fair competition 
• They demonstrate their goods or services as an alternative to those associated with the claimant 
• The claimant does not have a reputation or sufficient goodwill associated with the mark in question 
• They’ve acquired their own protectable goodwill in the mark due to honest concurrent use 
• The defendant is innocently using their own given name as a company name or business name
• The claimant is unable to demonstrate damage or loss 
• A prior business relationship exists between the two parties 
• The claimant gave their consent or encouraged the use of the mark 
• The claimant’s own use of the mark is deceptive or ambiguous 

Due to the complex nature of such cases, defending a passing-off claim can be equally challenging, even when the misrepresentation arises unintentionally, or the damage caused to the claimant is minimal. 

If you think someone is passing themselves off as your business

In this situation, the first step is to consult an intellectual property solicitor. They will recommend the best course of action to protect your rights. Passing off is a specialised area of law that requires expert legal advice. It is not something that you should attempt to deal with yourself. 

If your solicitor can establish the elements of a passing off claim and obtain supporting evidence, they may advise sending a ‘cease and desist’ letter in the first instance. This is a formal pre-action letter that informs another party of their infringement. Generally, it will include: 

• Details and evidence of the infringing activity 
• The actions you will take if they do not immediately cease the unlawful passing off 
• The legal consequences of failing to comply with your demands 
• A requirement to provide a formal written undertaking admitting the wrongdoing, confirming that they have ceased the unlawful activity, and agreeing not to repeat it in the future 
• An order to deliver up (surrender) or destroy the infringing articles or products 

When drafted effectively and supported by reliable, well-presented evidence, a cease and desist letter is often the quickest and most straightforward way to resolve the matter. 

However, should the recipient ignore the letter or persist with any unlawful activity, your solicitor may advise sending a subsequent ‘letter before action’ before commencing legal proceedings. 

If the matter ends up in court and your claim is successful, remedies may include injunctions, financial compensation for loss of profit or other damages, award of the defendant’s ill-gotten gains, and delivery up or destruction of the infringing work or items. 

How to protect yourself against passing off 

Whether running a business as a sole trader, partnership, or limited company, it’s essential to protect yourself from passing off by or against another party. Infringing on another person’s rights can occur all too easily, even through the most innocent of actions or oversights. 

Confidentiality 

To prevent another business from passing off its goods or services as your own, ensure your crucial commercial information remains confidential. If you need to discuss new ideas, concepts, processes, or inventions with other people, use non-disclosure agreements to keep them secret.

Register a company name

Registering a company name offers greater protection by prohibiting others from registering the same (or a very similar) company name. If another business uses your name, you may be able to sue on the grounds of passing off.

Alternatively, a simpler option may be to ask Companies House to use its enforcement powers to instruct the other company to change its registered name, per section 67 of the Companies Act 2006. Another option is to take any dispute about a company name to the Company Names Tribunal.

However, you can achieve more robust protection against passing off by registering your trading or company name as a trade mark (see below).

Use the 1st Formations company name checker to find out if a company name is available to register. We also advise checking the trade marks register.

Intellectual property protection 

Where possible, consider intellectual property (IP) protection, such as:

• Registering trade marks (e.g. your company name, trading names, product names, logos, or jingles)
• Registering a design (e.g. the appearance of a product, including its shape and packaging)
• Copyrighting your work (e.g. written work, art, photography, or web content)
• Patenting any inventions and unique products you may have created

Whilst the law of passing off offers certain protection, it’s far easier to prove that you’re the legal owner of intellectual property if it’s registered. 

Monitor the market 

It’s important to keep a close eye on your competitors. You can do this by researching what they do and how they promote themselves. You should also monitor the overall market. These proactive measures will make identifying potential infringements by other parties easier. 

Differentiate your business 

When designing or marketing your products, you must also consider the risks of inadvertently misrepresenting another business. Market research and monitoring will enable you to develop distinctive branding, differentiate your business, and establish a reputation or goodwill to protect your rights. 

Additional steps you can take include disclosing the origin of your products, where applicable, and seeking permission before including someone else’s registered or unregistered marks in any part of your business. 

Thanks for reading 

Passing off is a complex and delicate area of law. However, various proactive measures can be taken to protect your business and minimise the risk of infringing on the rights of others. 

If you find yourself in a situation where you believe passing off has occurred, it’s vital to seek specialist advice from an intellectual property solicitor. 

Please comment below if you have any questions about this post. You can also explore the 1st Formations Blog for more business advice and limited company guidance.