Passing Off — MCQs

All questions with answers and explanations

Read the full set here, or use the practice card above to test yourself one question at a time.

1. What is the primary interest protected by the tort of passing off?

   • A trader's registered trade mark only
   • A trader's goodwill and reputation from deceptive misrepresentation, regardless of registration (correct answer)
   • The plaintiff's personal reputation
   • The defendant's right to compete freely

   Explanation. Passing off protects a trader's goodwill (built-up reputation) from deceptive misrepresentation by a rival, regardless of whether any trade mark is formally registered.

2. What are the three elements of the 'classic trinity' test for passing off?

   • Malice, publication, damage
   • Goodwill, misrepresentation, damage (correct answer)
   • Duty, breach, causation
   • Combination, agreement, overt act

   Explanation. The classic trinity for passing off, formulated from Lord Diplock's Erven Warnink test, is: goodwill, misrepresentation, and damage.

3. In Erven Warnink BV v J. Townend & Sons (Hull) Ltd (the Advocaat case, 1979), the defendants were found liable for passing off because they

   • Registered a trade mark identical to the plaintiff's
   • Sold a cheaper, differently-composed drink under the name 'Advocaat', misrepresenting it as the genuine product and damaging the collective goodwill of genuine producers (correct answer)
   • Refused to pay royalties on a licensing agreement
   • Copied the plaintiff's factory design

   Explanation. The defendants sold an inferior product under the same name, misrepresenting it as the genuine Advocaat and trading on the reputation built up by genuine producers, causing damage to their collective goodwill.

4. According to Lord Diplock's formulation in Erven Warnink, passing off can protect

   • Only the goodwill of a single, individually identifiable trader
   • Also the collective goodwill of a class of traders sharing a recognised name or description for a product with defined qualities (correct answer)
   • Only registered trade marks
   • Only foreign trade names

   Explanation. Erven Warnink extended passing off beyond single-trader goodwill to protect a class of traders sharing goodwill in a name or description denoting a product with recognised qualities.

5. Does misrepresentation, for the purposes of passing off, need to be intentional or fraudulent?

   • Yes, fraudulent intent is always essential
   • No — even an innocent, unintentional misrepresentation is actionable, though deliberate deception strengthens the plaintiff's case (correct answer)
   • Yes, but only in cases involving food products
   • No, but only where the defendant is a registered company

   Explanation. Passing off does not require fraudulent intent — an innocent misrepresentation causing confusion is still actionable, since the tort protects goodwill regardless of the defendant's state of mind.

6. What is the primary remedy sought in a passing off action?

   • Criminal prosecution of the defendant
   • An injunction restraining continued use of the offending name, mark, or get-up (correct answer)
   • Compulsory dissolution of the defendant's company
   • Registration of the plaintiff's mark by court order

   Explanation. Injunction is the principal remedy since the primary object is to stop ongoing or future confusion in the marketplace; damages or an account of profits may also be claimed for loss already caused.

7. How does passing off differ from statutory trade mark infringement?

   • Passing off requires registration; trade mark infringement does not
   • Passing off is a common law action not requiring registration; trade mark infringement is a statutory action requiring a registered mark (correct answer)
   • They are identical actions with different names
   • Passing off applies only to services; trade mark infringement applies only to goods

   Explanation. Passing off is a judge-made common law action protecting unregistered goodwill; trade mark infringement is a statutory action requiring the plaintiff's mark to be formally registered.

8. What did Reckitt & Colman Products Ltd v Borden Inc (the 'Jif Lemon' case, 1990) do to the passing off test?

   • Abolished the tort of passing off entirely
   • Restated Lord Diplock's five-point formulation from Erven Warnink as the simpler, modern three-element 'classic trinity' (correct answer)
   • Extended passing off to cover patent infringement
   • Required proof of fraudulent intent for the first time

   Explanation. Lord Oliver in Reckitt & Colman restated Lord Diplock's five characteristics from Erven Warnink into the now-standard 'classic trinity' of goodwill, misrepresentation, and damage.

9. A snack brand sold for years in a distinctive yellow-and-red wrapper under the name 'Golden Crisp' faces a new competitor selling a similar snack in a nearly identical wrapper under the name 'Golden Krisp'. Applying the classic trinity, the original brand's strongest claim is

   • Criminal fraud, since the names are similar
   • Passing off, since it has established goodwill, the new brand's similar name/packaging is a misrepresentation likely to confuse customers, and this causes damage to its goodwill (correct answer)
   • Breach of contract, since no contract exists between the two brands
   • Defamation, since the new brand has damaged the original brand's reputation

   Explanation. This fact pattern satisfies all three elements of the classic trinity: goodwill (established reputation), misrepresentation (deceptively similar name/packaging), and damage (confused customers, lost sales).

10. If the original manufacturer had registered 'Golden Crisp' as a trade mark, would the passing off claim still be available alongside a trade mark infringement claim?

    • No, registration extinguishes any right to sue in passing off
    • Yes — passing off remains available regardless of registration, since it protects goodwill built through actual use and reputation, independent of the statutory right (correct answer)
    • No, only criminal remedies would be available
    • Yes, but only if the trade mark registration has expired

    Explanation. Passing off and trade mark infringement can be pleaded together — registration does not extinguish the separate common law right in passing off, which protects goodwill built through actual market use.