What is the penalty for passing off?

This article explores what the penalties for passing off are. However, before doing that, we must understand what passing off means and establish the elements included in a “passing off” claim.

What is Passing Off?

Under UK common law, passing off occurs when someone deliberately or unintentionally passes off their goods or services as their own, when it actually belongs to someone else. It is a legal concept which protects businesses from unfair competition and misrepresentation.[1] This misrepresentation often damages the goodwill and reputation of a person or business, as well as their finances.[2] These passing off claims are usually made by people who are in possession of an unregistered trademark, to prevent others from copying that trademark, trade description, the individual features of labelling or packaging and so on.[3]

Elements of passing off

To establish a passing off claim in the UK, there are three essential elements which must be considered. These elements are goodwill, misrepresentation, and damage, which derived from the House of Lords decision of Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 WLR 491, which is also known as the “Jif Lemon” case.[4]

1. The claimant must determine and prove that they have established a significant reputation or goodwill which is associated with their goods, services, or brand in the relevant market.
2. The defendant must have made a misrepresentation (express or implied)that is likely to deceive, mislead, or confuse consumers into believing that their goods and services are connected with the claimant.
3. The claimant must prove that due to the misrepresentation, they have suffered or are likely to suffer damage to their reputation or cause actual or foreseeable financial loss.

However, if a holder has a registered trademark, there is no need to prove goodwill.

Penalties and Remedies

It is a civil, not a criminal offence to pass off and there are no statutory fines. However, the court may impose several remedies and penalties to uphold the claimant’s rights and compensate for any damage caused if a passing off claim is successful. These include but are not limited to:[5]

1. An injunction to stop the business from passing off your goods or services as their own.
2. Compensation or damages for reputational or financial damage.
3. An order for destruction of any goods that infringe your rights.
4. An order for Cessation of any services that infringe your rights.

Summary

The law on passing off is complicated, can be hard to prove and taking action can be expensive. It is crucial for businesses to safeguard their reputation and interests. Summ

[1] https://www.london-law.co.uk/understanding-passing-off/

[2] https://www.nibusinessinfo.co.uk/content/passing-definition-remedies-and-defences

[3] https://www.tannerdewitt.com/passing-off-the-jif-lemon-case-reckitt-colman-ltd-v-borden-inc/

[4] Ibid.

[5] https://legalvision.co.uk/intellectual-property/passing-off-laws/#how-does-passing-off-work?