The Role of Passing Off in Protecting Unregistered Trademarks

Imagine you are a business owner wanting to protect the trade name of your business or differentiate your products from its competitors. Accordingly, you would register a trademark. This not only provides your business with the legal protection it needs, but also helps it establish a distinct sense of brand identity.To foster a sense of security in a competitive business environment, various jurisdictions have implemented relevant legal provisions regulating trademarks. In Hong Kong, trademarks are governed under the Trade Marks Ordinance (Cap. 559), which provides the definition and consequences of trademark infringement. With similar governing legislation in other jurisdictions (e.g. the UK Trade Marks Act 1994), the question arises as to whether unregistered trademarks warrant any legal protection.

What is passing off?

The common law tort of passing off protects unregistered trademarks and the goodwill of a trader by preventing another trader from making misrepresentations that would damage the other’s goodwill. Simply put, passing off consists of the court assessing whether the defendant is acting inequitably. Additionally, passing off claims are often brought along with trademark infringement claims. This is because even a registered trademark may not cover all of the goods/services for which the claimant is seeking relief over.

What are the elements of passing off?

A landmark decision made by the House of Lords on passing off would be Reckitt and Coleman Properties Ltd v Borden Inc, also known as the “Jif Lemon case”. There, Lord Oliver outlined 3 elements the claimant must demonstrate to succeed in a passing off claim, often referred to as the “classical trinity” of passing off:

1. Goodwill

 The claimant must demonstrate that there is goodwill or reputation attached to his goods or services, such that purchasers would be able to distinguish them from other competitors. 

2. Misrepresentation

 Lord Oliver described this as the “critical element of the tort”. It may be as simple as the defendant misrepresenting his goods or services as ones originating from the claimant to him promoting the belief of being a licensee or franchisee of the claimant’s business.

3. Damage

The claimant must show that there is damage or, in common law injunction actions, a real risk of damage to his goodwill or reputation. Particularly in interlocutory injunction cases, where the claimant seeks an injunction pending trial, courts have often been willing to assume damage (or establish it on limited grounds) as long as there is a finding of a deliberate misrepresentation (See ABG Juicy Couture Ltd v Bella International Ltd t/a Juicy Girl). In these cases, the Court often acknowledges the potential harm to the claimant's reputation, even if the extent of the damage had not yet been fully determined.

Conclusion

The tort of passing off plays a crucial role in protecting unregistered trademarks and the associated goodwill of businesses. As jurisdictions continue to adapt their trademark laws to an ever-evolving landscape, passing off remains an essential mechanism for business owners who have not registered their trademarks but still seek to defend their brand integrity.

References and further reading

• “Trade Marks Ordinance (HK Government Legislation, Cap. 559)”

• “Intellectual Property in Hong Kong (3rd Edition)” (Douglas Clark)

• “Goodwill in Passing Off: A Common Law Perspective” (Catherine Ng)

• “Passing Off: The Jif Lemon Case (Reckitt & Colman Ltd v Borden Inc)” (Tanner De Witt Solicitors)