Passing Off: An overview.
17th February 2012
A competitor has recently started using a logo that is very similar to our business logo, without our consent. The logo is not registered as a design right. What can I do to protect my business and stop my competitor from continuing to use the logo?
You may have a claim for passing off if another business has created potential confusion to customers by using a similar logo or mark to yours. A passing off claim may also arise if another business uses a similar name to yours or copies your packaging or “get up” (e.g. slogans, package shape or visual images).
You may be able to apply to the Court for an injunction to prevent them using the logo or mark. An interim injunction may be granted, pending a full trial. You may also seek delivery up or destruction of any infringing products and either compensation for damages or an account of your competitor’s profits.
There are three requirements which need to be established for a claim to succeed:
Goodwill may be described as being the value of your good name and reputation and connection with customers that brings in business. You must show evidence that your logo or mark is a distinguishing feature that customers and prospective customers associate with your business; in other words that you have established goodwill or a business reputation in the logo or mark.
The Court will require quite compelling evidence to show that you have goodwill, such as details of your marketing budget, sales figures and customer surveys, as the objective is to protect a trader’s business from unfair competition rather than allowing one business to have a monopoly in using a particular feature.
You must also establish that your competitor, acting in the course of trade, has misrepresented their own goods or services so that customers or prospective customers believe or are likely to believe that that they are associated with you. The misrepresentation does not have to be deliberate.
You will also need to show that you have suffered actual or likely financial loss as a result of your competitor using the similar logo or mark. This can include loss of profits, damage to your reputation (e.g. if customers or prospective customers associate your opponent’s inferior product with yours) or loss of opportunity to expand.
Your opponent may dispute the Claim by arguing a number of grounds, such as:
- The mark or logo that you use is not distinctive;
- The mark is merely generic;
- The mark is descriptive;
- You have given your consent to them using the logo or mark; or that
- YTou have abandoned the logo or mark.