Is passing off a trademark infringement?

If you have a registered trademark, the legal cause of action against the infringer is trademark infringement. However, if you have an unregistered trademark, the legal cause of action against the infringer is passing off.

What is meant by passing off in trademark?

Meaning of Passing-Off Passing off is used to protect or safeguard the goodwill attached to an unregistered trademark. The principle of passing off, i.e. “Nobody has the right to represent his goods as the goods of somebody else” was decided in the case of Perry v Truefitt (1842).

Is passing off illegal?

Passing off is a common law cause of action, whereas statutory law such as the United Kingdom Trade Marks Act 1994 provides for enforcement of registered trademarks through infringement proceedings. Passing off does not confer monopoly rights to any names, marks, get-up or other indicia.

How do you prove someone passed off?

In order to succeed in a passing off action the claimant has to prove that:

1. They possess a reputation or goodwill that is associated with their goods or services;
2. There has been a misrepresentation by the defendant which has led to confusion;

What is the difference between trademark infringement and passing off?

In an action for infringement, the Plaintiff on account of it being a registered trade mark in dispute claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a person of his goods as those of another, in essence, is an action of deceit.

What is infringement and passing off?

Trademark infringement/Passing off is the unauthorized use of a trademark or service mark on competing or related goods and services. The success of a lawsuit to stop the infringement depends on whether the defendant’s use causes a likelihood of confusion in the average consumer.

What is the difference between passing off and infringement of a trademark?

Difference between Passing Off and trademark infringement. Trademark provides protection to registered goods and services whereas Passing Off provides protection to unregistered goods and services. Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.

How do I protect an unregistered trademark?

Such unregistered mark can still be protected under common law tort of “Passing off”. Thus, owner of an unregistered trademark may be able to prevent use by another party of an infringing mark pursuant to the common law of passing off.

How do I protect against passing off claim?

The key defences are:

1. Use of defendant’s own name.
2. Use other than in the course of trade.
3. Claimant cannot show sufficient goodwill.
4. Claimant’s mark is not distinctive.
5. Claimant’s mark is generic.
6. Claimant’s delay in taking action.
7. No proof of misrepresentation.

What are the remedies for infringement of a trademark?

Some of the most common legal remedies for trademark infringement include:

• Monetary compensation. The classic legal remedy in any type of litigation is monetary compensation.
• Court-ordered injunction.
• Court-ordered forfeiture or destruction of the infringing goods.
• Payment of plaintiff’s attorneys’ fees.

What amounts to infringement of trademark?

In simple words, trademark infringement is the unauthorised usage of a mark that is identical or deceptively similar to a registered trademark. The term deceptively similar here means that when an average consumer looks at the mark, it is likely to confuse him/her of the origin of the goods or services.

What’s the difference between trademark infringement and passing off?