Protecting Your Brand – Passing Off Explained

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With the continued and ever-increasing impact of your business’s on-line brand, the importance of protecting that brand has never been more significant.
At Andrews Ritson we have noticed an increase in the number of enquiries and claims that we are dealing with of this nature. There appears to be an increasing number of start-ups that are attempting to ‘piggy back’ on the goodwill and reputation of other longstanding businesses, and with social media and other online marketing, this is becoming much easier to do. This type of action is called ‘passing-off’ – when a business attempts to hold itself out as another long-established business. This may, for example, be using a very similar brand name or copying your logo.

To an established business, the consequences of passing-off can be significant. It is not simply a risk that the new business will steal away your existing or potential customers, but in addition, should that new business supply an inferior product, it may well tarnish your good name in the marketplace.
If you suspect that someone is trying to mimic your brand name, domain name or logo, you will need to consider the following three stage test:

1. Your goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or logo;
2. There is a misrepresentation by the Defendant (whether intentional or not) leading, or likely to lead, to the public believing that goods or services offered by the Defendant are goods or services offered by you; and
3. That you have suffered, or are likely to suffer, damage as a result of the erroneous belief caused by the misrepresentation.

It is important that all three limbs of the above test are present if you are to be successful in a claim for passing off. You must also remember that the court will want to see evidence before making a judgment. This is not only evidence of the misrepresentation, but also of the damage suffered, or likely to be suffered, by you. This is not always easy to prove and we recommend that legal advice is sought before embarking on this type of claim.

Given the increase in the number of these types of claims, we recommend that businesses are extra vigilant. This may include undertaking regular internet searches to see if any other businesses turn up with similar branding to yours. You may also consider protecting your intellectual property before another business tries to copy it.

If you think your business is being passed-off by another business you need to act fast as the courts will take this in to account. Andrews Ritson solicitors have a team that specialise in dispute resolution, which includes claims for passing-off.

If you would like to discuss an existing or potential claim please contact Jason Round on 01746 769 700 or at jround@andrewsritson.co.uk.
Alternatively, if you would like to discuss protecting your business’s brand and intellectual property, please contact Rob Andrews on 01746 769 700 or at randrews@andrewsritson.co.uk.