course material

1. LAWS5560 Intellectual Property Law
Answers:
Introduction
Trade mark and passing off are two varied concepts, which are often used simultaneously in
common parlance. In UK, through the registration of a trade mark, the proprietor is able to
attain exclusive rights for making use of the registered trade mark for the pertinent services
or goods, which had been registered. Through the registration, the owner is given the right
of stopping the other individuals from using a mark which is similar to the registered mark,
and which could confuse a common user regarding the goods or services being the
registered ones. There can be certain scenario where the owner can also get the right of
stopping the other individuals from using a mark which not even similar to the registered
mark. The owner of the mark can get certain rights, even when the mark is not registered.
Where a trader uses a mark that attains goodwill, which is associated to a mark, the trader
can get some protection in such cases. Goodwill is deemed as quality that causes a customer
to go back to that specific trader, instead of resorting to another one. The trade mark owner
can sue the other trader, where the mark is made use of, in such a manner, so that the public
can be confused by creating a belief that the goods are the ones, which belong to the owner
of such a mark.
Essentially, both the concepts, i.e. passing off and trade mark offer protection to the traders
to stop the other person from making use of their logo, be it an unregistered or a registered
one. This is done so that the trader is safeguarded and so that the consumers are not duped,
whereby they end up getting the wrong product or service due to inapt behaviour by one
person. Through the following parts, the elaboration of the laws pertaining to the two
concepts has been done so as to understand the similarities and differences that the two
concepts have. This would enable the readers to get clarity on the significance of the two
concepts and on the change of position that they get when they opt for either one of these
options.
Passing Off And Trade Mark Law
Passing Off
Where one business has easily recognisable features or distinguishing features, the other

2. business cannot take such steps, which end up looking like an attempt at passing off the
business as if it is their own. Where this happens, there are ranges of remedies that can be
selected by the original businessperson. At the same time, the other businessperson gets a
range of defences that can be opted in case a claim is raised against them. The goodwill or
the reputation of the business is something that is made use of while trying to give the
identity to any business, or to its services or goods, which help in distinguishing the
business from its competitors. Goodwill is deemed as the advantage or benefit that the firm
gets due to its reputation, business connections, and good name. Goodwill is thus the
attracting parameters, which brings in the customers. Through the use of passing off law, a
business owner can stop the defendant by relying on their reputation and goodwill.
The first and foremost option or making a successful claim of passing off is relying on the
goodwill of the business. There is a need to show that the business has acquired the
required goodwill. For making a passing off claim, there is a need to show that the
defendant has made use of the get-up, mark, or the name of the plaintiff or their business.
Even though the claim of goodwill can be represented through colours, shapes, names,
words, or get-up, the protection is offered to the business as a whole and not on the basis of
the individual elements. Reference can be made to the case of Burberry's v Cording (1900)
26 R.P.C. 69 to understand the passing off principle. The judges noted that several cases had
been noted that depicted that people relied on this tactic. One side states that only the trade
mark law is able to ensure that the monopoly rights are presented for using a name or a
word. Conversely, the other side presents that that no one has the right of using any name
or word, where the same represents his products as being that of another, so as to act as
injury for such other. The injunction order granted in such cases is aimed at protecting the
property and the right that is bestowed upon the name or word that associates with such
property, and which would otherwise be injured.
Even though the length of time that is required for establishing goodwill is deemed as a
matter of fact in all situations, there is no strict regarding the same. Here, it is crucial to note
that a business, which has not undertaken any trade, would not be very likely in its ability to
bring a passing off claim. In passing off claims, the grounds of making a claim have been
extended over a period of time, which now includes the use by defendant of the marketing
or branding techniques that the plaintiff makes use of in daily parlance. This covers the
visual images or slogans used in the plaintiff of the advertisements. Weightage is not given
to the notion that the wrongdoer did intend to pass on the good or services as the ones that
were of the claimant, or that the person did so in a fraudulent, negligent or malicious
manner. Innocence is thus not considered as a defence under the law for an action of
passing off raised in this context.
To understand the context of goodwill, reliance can be placed on the definition of this word
given in the case of Inland Revenue. Commissioners v Muller & Co's Margarine Ltd [1901]
AC 217 at 223. Goodwill is deemed as a thing that can be easily described but it is a concept
that is very difficult to define. It essentially denotes the advantage or the benefit that is

3. attained by the business owing to its business connections, reputation and good name. It
helps on differentiating an already established business from a business, which is newly
started or is at its start. For a business, the goodwill emanates from a specific source or
centre. Irrespective of the extension of diffusion of the influence that it has, the goodwill will
stop meaning anything unless it has the power of attracting enough customers to the source
from where it begins.
Further elaborations regarding goodwill were made in the case of Ewing v Buttercup
Margarine Company, Limited [1917] 2 Ch. 1. In this case, the court stated that the plaintiff
has put sufficient proof to show that the defendant had used their name in a manner that
would lead the people to believe that this was the business of the plaintiff, which was being
handled by the defendant. The conduct of the defendant was such that the belief was
induced regarding the business being a branch of business of someone else, which
essentially means that this someone else had to bear the loss of such representation, in
varied manner. The kind of business done by the plaintiff, the quality that they serve, or the
credit they enjoy, would all be at a disposal of the defendant due to such a representation.
This would also be unfruitful for the ones who fall for such a misrepresentation. This is the
reason why the passing off claim in this case was deemed successful.
Within the context of discussion on passing off cases, reference needs to be made to Office
Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 as
well. This case saw the contentions being made on the trader adopting words in Common
Law for their trade name, which meant that the risk of confusion was bound to take place.
The court stated that even in such cases, it was crucial to show that the risk was running
unless the first user was allowed to monopolise the words in an unfair manner. The
acceptance of comparatively smaller differences was deemed sufficient by the court so as to
avoid any confusion. A higher discrimination degree was fairly expected from public in such
cases where the trade name covered part or whole words that were a description of the
service being rendered or the product being sold.
Apart from goodwill, there is another context in, which passing off can be allowed as a
remedy by court, and this is the case that involves misrepresentation. There is a need to
show that the defendant has made a representation, which was deceptive, confusing, or was
likely to deceive or confuse the people. Consideration is not given to the fact that the
misrepresentation was true or that at the very same time it had the power or impact of
confusing the public regarding the origin of services or goods of the defendant. Apart from
this, there is no need for defendant making the presentation with the intent of confusing
others. The innocence, as stated earlier, could not be taken as the act of passing off.
The misrepresentation has to be in context of the source of goods. The defendant, in a
typical scenario, would present that their services or goods are that of the plaintiff. Such a
misrepresentation could be in the form of express statement that has been shared by the
defendant or could be implied by the defendant’s use of similar or same distinguishing

4. marks with regards to the services of goods used by the plaintiff. The passing off can also
take place in such cases where the defendant ends up representing good or services of
another person in a wrongful manner, which essentially means that they take the credit of
goods or services that originated from another person or entity.
The confusion risk is dependent on the visual and phonetic similarities among the marks,
the situation where the goods were sold or services were supplied, the nature of goods or
services, the habit of ordinary purchaser, and the nature of the marketplace. It becomes
difficult to establish the chances of confusion in such cases where the plaintiff adopts the
ordinary descriptive for identifying the services or goods. There is a need for the plaintiff to
show that the public has become associated with such words and links it to only the plaintiff
and no one else. It is not that majority or all current or potential customers were confused.
In Star Industrial Ltd v Yap Kwee Kor [1975] FSR 256, the court stated that the remedy for
passing off action could be given as remedy where there was an invasion of right of
property and not of the name, mark or the get up used in an improper manner. There is a
need to show that the business would likely be injured due to misrepresentation that took
place due to the passing off of goods to another person, as their goods.
In Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873, the court stated that there was a
need to establish reputation or business that the plaintiff had, and that there was a
misrepresentation by the defendant, made to the public. Lastly, there was a need to show
that the defendant suffered or was likely to suffer damage as a result of the erroneous belief
that was posed by the misrepresentation undertaken by the defendant regarding the source
of goods and services of the defendant as being that of the plaintiff. This means that apart
from goodwill and representation, there is a need to show the presence of damage for the
plaintiff, for a claim of passing off to be successful. The damage could be in form of damage
to reputation, damage by association, erosion of goodwill, loss of opportunity, loss of sales,
and loss of profit. The presence of passing off allows the plaintiff to claim an injunction,
search and seizure order, damages and an order for destruction or delivery of infringed
articles.
Trade Mark Infringement
As stated at the beginning of this discussion, trade marks are granted to registered objects.
In UK, the proprietor of the registered trade mark gets the exclusive rights of such mark
that were infringed by the use of it done by someone else, without taking their proper
consent. The proceedings related to trade mark infringement can be raised in context of
marks that have been registered. The claim of passing off take a wider stance in comparison
to the trade mark claims. This is because in trade mark, the mark has to be registered, while
the passing off mark is not, which makes it wider in ambit. A claim of passing off in context
of benchmarking it for establishing it are higher in comparison, when viewed from the
evidential viewpoint. This is because it is easy to prove the three elements of goodwill,

5. misrepresentation and damage. In trade mark infringement action, where one prohibited
act has been committed, the defendant is made liable, unless the defendant can put forth a
specified defence is applicable.
In UK, the Trade Marks Act, 1994 governs the trade mark regime of the nation. This is based
on EU trade mark law, covered under Directive (EU) 2015/2436. Such signs would be
deemed as a trade mark as per section 1 of this act that are deemed as capable of being
graphically represented that carries a capability of distinguished services of goods of one
entity from another. The more recent amendments based on Directive (EU) 2015/2436
were integrated in UK laws through the Trade Marks Regulations 2018, SI 2018/825, which
were introduced from 14 January 2019. Even though, post Brexit, UK is no longer subjected
to the regulations or directives of EU, similar provisions still continue. The marks applied
before this landmark event still continue to get protection.
Difference Between Passing Off And Trade Mark
Now that the two concepts are clear in the manner they are applied, there is a need to
understand the manner in which these are different so that the relevant protection can be
sought by the businesses. For centuries, the remedy for passing off has been present under
the common law. As against this, the remedy for trade mark has been presented through
statutory protection that is granted post registration of the mark. In a relative manner, it
has not been present for a long time. Hence, the rules regarding the passing off are judges
made, while the law regarding trade mark infringement is made by the relevant legislative
body. This being said, the origin of statutory trade mark provisions does not indicate any
degree of rigidity so far as the legislative instruments’ application is concerned. There is a
constant interpretation of the statute by the court, and it can be stated that the statue is a
broad framework for the functioning of judiciary, in context of finding the law.
A deeper understanding of these differences highlights the next point of differentiation,
which is in context of the acquisition of rights in passing off and in trade mark. The rights
that relate to passing off were established in a gradual manner, with the usage. Here, the
key question was regarding the acquired reputation of a specific mark. Reputation
establishment is dependent on a variety of factors that cover the degree of distinctiveness,
the nature of mark, the sales figures, the period of usage, and the promotion expenses that
have been incurred on the marketing of the products that had the get-up or mark. The
protection that is offered through the legislation is one that becomes available on
immediate basis with registration. The protection that is granted is not short term based or
dependent on the usage of such mark. From this perspective, it could seem that by getting
the statutory rights, it would expedite the manner the rights are obtained. However, this
observation is not reflected in reality. This is based on the fact that the timeframe taken for
registration, where the application could take up to a good span of 3-4 years. This means
that the theoretical position is changed due to the factual position.

6. This is not all when it comes to difference between the two concepts. A further
differentiation could be noted in the case of alleged passing off being deemed as that based
on goodwill that has been built by making use of the protected mark. However, in context of
the trade mark infringement, the right of mark is in itself protected. This means that the
practical differentiating point in context of the remedies offered under the two concepts is
the comparison of two marks in passing off is related to the use of the product or the
context in which such a product is used. To put in it contextual terms, a product X would not
get protection for being similar to product Y unless the same is in use. The use of addition of
the distinctive material like shapes or colours is thus taken into determination by the courts
to consider the chances of confusion. Conversely, in case of trade mark infringement, the
comparison is drawn only on the basis of similarity of the two marks and any other matter
is not taken into consideration. Thus, there is a more holistic approach adopted in passing
off cases, and the trade mark law only considers registration aspect, irrespective of use of
the mark by the respondent in a distinctive manner.
There is no need of establishing the use of a mark in context of similar or same goods in
context of passing off. This requirement has been presented under section 34(1)(a) and
34(1)(b) of the act, but not for (c) of this sub-section, which is related to the use of famous
marks with regards to any goods. Passing off does not need to show the possibility of
confusion. As against this, where the registered mark is present in context of same goods,
where registration has been attained, section 34(1)(a)requires to show only the similarity
between the market. There is no need of showing that the confusion, in a certain sense,
would result in an irrefutable presumption to this effect. In a similar manner, when a
famous mark is infringed, example in matter of dilution, there is no need of showing any
confusion. The main contention in cases of passing off is whether the use is going to affect
the goodwill of the business in an adverse manner. In infringement cases, the right to
goodwill is not present. There is also a need to mention that the remedy for passing off is
present only for a specific geographical area where the reputation of the business existed.
As against this, in case of trade mark, the remedy in form of protection, would be available
in the entire country.
Conclusion
The previous discussion covered a detailed analysis of the concepts of passing off and trade
mark in UK jurisdiction. The two concepts are similar and different from different view
points. The main point of similarity between the two concepts is that it offers protection to
the business or the proprietor for the mark or get up they use. This is in context of another
business representing to be such former business, so as to take advantage of the product of
the first business. This could intentional or unintentional. This is important not only to
protect the business but also to protect the consumers, from otherwise they will be duped
into buying something that they thought had originated from another business.
Despite the similarity in basic concept of the two terms, there are quite many differences

7. between the two. The first and foremost is that passing off is a concept that was born a long
back through common law. On the other hand, trade mark was born through statutory
concept, which is still a novice in comparison. The former concept offers wider protection in
comparison to the latter, as the former is not restricted by registration and can be imparted
basis the three elements of goodwill, misrepresentation and damage. In context of passing
off, there is a need to establish the use of the product, while this is not needed in trade mark.
All in all, despite the differences between the two concepts, these are substantial in terms of
offering necessary protection to the businesses from a misuse or misrepresentation.