‘Protecting Unregistered Brands: A Practical Guide to the Law of Passing Off’ by Lorna Brazell
Published: February 2020
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Misrepresentation to customers as to the trade source of goods or services, whether through express statements or the unauthorised use of another business’ branding, is an unfortunately common form of unfair competition between traders. Where a brand has been protected through registration as a trade mark, enforcement is relatively straightforward. But if no registered trade marks can be brought to bear, then the common law tort of passing off is the primary tool available to combat this type of behaviour.
The tort has been developed through a succession of cases over more than two centuries so that applying and interpreting the established principles for each new set of circumstances requires very careful analysis of a wealth of decisions. This guide highlights the key principles and the ways in which they have been used to defend businesses’ goodwill across the complete range of industrial and commercial sectors, and sets out the critical issues that a business needs to consider when faced with another trader attempting to suggest some association with its brands.
ABOUT THE AUTHOR
Formerly a Partner and Head of Intellectual Property at Osborne Clarke in London with over 25 year’ experience of advising on intellectual property in all its forms, Lorna is now a Consultant to the firm. She is the author and co-author of several books in the field and regularly lectures on intellectual property at a range of conferences in Europe and around the world.
Chapter One – Introduction: When and Why Do We Need a Tort of Passing Off?
Why do we need a tort of passing off?
Registered trade marks: potential and limitations
The scope of the tort
Other possible remedies
Chapter Two – Elements of Classic Passing Off
Goodwill, misrepresentation and damage
Intention is irrelevant
Who can bring a claim
Chapter Three – The Claimant: Goodwill
What is goodwill?
Reputation is not necessarily goodwill
Who can claim goodwill
Ownership of goodwill
Dealings in goodwill
Goodwill as security for debt
Remedies for non-traders
Chapter Four – The Claimant: Damage
Types of damage
Can damage be assumed?
Unimportance of fraud in a claim for passing off
Heads of damage
Chapter Five – The Customers’ Perceptions: What Constitutes a Misrepresentation
The relevance of truth
Disclaimers and co- or own-branding
Chapter Six – The Defendant: Traders, Officers, Others
Misrepresentation by non-competitors
Misrepresentation to suppliers
Chapter Seven – The Product as a Misrepresentation: Distinctiveness and Deception
Copying does not prove distinctiveness
What does it take to be distinctive?
What kind of signs can be relied upon?
Assessing distinctiveness and deception
Chapter Eight – Expanding the Boundaries: Reverse Passing Off and Other Actionable Misrepresentations
Reverse passing off
The new business is connected to the branded business
Personality merchandising and endorsement
Switch selling and substitution
Designations of origin and type of goods
Denial of existence and denigration
Chapter Nine – Defences
Concurrent or earlier rights
Delay, acquiescence and estoppel
Restriction of competition and freedom of movement
Chapter Ten – Enforcement
Courts and costs
Pleading the claim
The individual defendant: joint tortfeasorship
Chapter Eleven – Further Reading