4. Passing Off
This is the 4th post in Law of Torts, Unit 4 — Business and Reputation Related Torts and Remedies. This post covers passing off, the common law tort that protects the goodwill a trader has built in their name, mark, or get-up from deceptive imitation by a rival.
The Problem This Topic Solves
A trader who spends years building a reputation for quality, reliability, or distinctiveness under a particular name or trade mark faces a real risk: a rival trader may simply imitate that name, packaging, or overall appearance closely enough that customers are deceived into buying the rival's goods believing them to be the genuine article. This causes two kinds of harm — the deceived customer does not get what they thought they were buying, and the original trader loses sales and, over time, the value of the goodwill built up in their name. Not every trader registers a trade mark, and even where a mark is registered, statutory trade mark law may not cover every form of deceptive imitation, such as imitation of packaging, business name, or overall "get-up." The common law tort of passing off exists precisely to fill this gap — it protects a trader's goodwill against deceptive misrepresentation regardless of whether any mark is formally registered, giving a remedy wherever one trader passes off their goods or business as those of another.
Passing Off — Meaning
Passing off is the tort committed when a trader makes a misrepresentation, in the course of trade, that leads or is likely to lead the public to believe that the goods or services offered by that trader are the goods or services of another trader, or are connected with, sponsored by, or associated with that other trader, thereby causing or threatening damage to the goodwill of that other trader. The essence of the tort lies in protecting the goodwill — the attractive force that brings in custom, built up through a trader's reputation — against confusion deliberately or carelessly created by a rival. Passing off is a common law action, developed by judges over more than a century, entirely independent of any statute; it protects an unregistered trade reputation, in contrast to statutory trade mark law, which protects marks that have been formally registered with the appropriate authority.
Essentials — The Classic Trinity
The essentials of passing off are traditionally expressed as three elements, often called the "classic trinity": goodwill, misrepresentation, and damage.
Goodwill is the attractive force of the trader's business — the reputation and custom that the trader has built up in connection with their name, mark, get-up, or business, recognised and valued by the relevant section of the public. Without goodwill, there is nothing for the law to protect; a trader who has not yet established any reputation in a market cannot succeed in passing off merely because a rival has used a similar name.
Misrepresentation is a representation by the defendant, made in the course of trade, to prospective customers of the defendant or ultimate consumers of goods or services supplied by the defendant, which is calculated to injure the business or goodwill of the plaintiff. The misrepresentation need not be intentional or fraudulent — an innocent, unintentional passing off is still actionable, since the tort protects the plaintiff's goodwill from being confused with the defendant's goods regardless of the defendant's state of mind, though evidence of a deliberate intention to deceive strengthens a plaintiff's case considerably.
Damage is actual or probable injury to the plaintiff's goodwill or business, caused by the confusion created by the defendant's misrepresentation — typically loss of sales, dilution of the distinctiveness of the plaintiff's mark, or injury to reputation where the defendant's goods or services are of inferior quality and are confused with the plaintiff's.
The Classic Trinity, at a Glance
Erven Warnink BV v J. Townend & Sons (Hull) Ltd (1979) — House of Lords (the "Advocaat case").
Facts: The plaintiffs were Dutch producers of "Advocaat," a traditional egg-and-spirit-based liqueur made to a particular recipe with a distinctive character and reputation built up over many years in the English market. The defendants began selling a drink under the name "Advocaat," but made from cheaper ingredients — a mixture of dried egg powder and a fortified wine, rather than the spirit base traditionally used — which allowed them to sell it more cheaply while trading on the reputation and goodwill that the name "Advocaat" had built up. The plaintiffs sued to restrain the defendants from using the name for their inferior imitation product.
Holding: The House of Lords held in favour of the plaintiffs. Lord Diplock formulated five characteristics that must be present to create a valid cause of action for passing off: (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers or ultimate consumers of goods or services supplied by them, (4) which is calculated to injure the business or goodwill of another trader, and (5) which causes actual damage to the business or goodwill of the trader bringing the action, or which will probably do so. On the facts, the defendants' use of the name "Advocaat" for a product made to a different, cheaper recipe was a misrepresentation likely to deceive purchasers into believing they were buying the genuine product, causing real damage to the collective goodwill built up by the genuine producers of Advocaat. This case significantly extended the scope of passing off beyond the traditional requirement of a single identifiable trader's goodwill, recognising that the goodwill of a class of traders in a distinctive product could also be protected. Lord Diplock's five-point formulation was later reformulated by Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc (1990) — the well-known "Jif Lemon" case — into the simpler, and now standard, three-element "classic trinity" of goodwill, misrepresentation, and damage that is used to state the essentials of passing off today. A full standalone Case-Law post on this decision is available in this unit's Case-Law list.
Remedies
The principal remedy for passing off is an injunction, restraining the defendant from continuing to use the offending name, mark, or get-up, since the primary object of the action is to protect the plaintiff's goodwill from ongoing or future confusion in the marketplace, not merely to compensate for past loss. In addition to, or instead of, an injunction, the plaintiff may claim damages, to compensate for the actual financial loss suffered as a result of the passing off, or, as an alternative remedy, an account of profits, requiring the defendant to hand over the profits actually made through the deceptive use of the plaintiff's goodwill, on the theory that the defendant should not be permitted to retain gains made by trading on another's reputation. Courts may also order delivery up or destruction of infringing goods, packaging, or labels bearing the offending mark or get-up, to prevent further circulation of the deceptive material.
Distinction from Trade Mark Infringement
Passing off is frequently pleaded alongside a statutory claim for trade mark infringement, but the two are conceptually distinct causes of action, arising from different sources and requiring proof of different elements.
| Point of Distinction | Passing Off | Trade Mark Infringement |
|---|---|---|
| Source of the right | Common law action, developed by judicial precedent | Statutory action, created and governed by trade mark legislation |
| Registration required | No — protects goodwill regardless of whether any mark is registered | Yes — requires the plaintiff's mark to be registered with the appropriate authority |
| What must be proved | Goodwill, misrepresentation, and damage (the classic trinity) | Use of a mark identical or deceptively similar to the registered mark, in relation to the registered goods or services |
| Scope of protection | Can extend to get-up, packaging, business name, and other indicia of trade origin, not just a formal mark | Confined to the specific mark as registered, and generally to the goods or services for which it is registered |
- Passing off protects a trader's unregistered goodwill from deceptive misrepresentation, distinct from statutory trade mark infringement, which requires a registered mark.
- The classic trinity for passing off is goodwill, misrepresentation, and damage.
- Erven Warnink v Townend (the Advocaat case) gave Lord Diplock's five-point formulation of passing off, later simplified into the classic trinity by Lord Oliver in Reckitt & Colman (the Jif Lemon case).
- Misrepresentation for passing off need not be intentional — even innocent confusion is actionable, though intentional deception strengthens the plaintiff's case.
- Remedies are primarily injunction (to stop ongoing confusion), with damages or an account of profits available for the loss already caused.
- Erven Warnink extended passing off to protect the collective goodwill of a class of traders in a distinctive product, not just a single trader's goodwill.
- Reckitt & Colman Products Ltd v Borden Inc (1990), the Jif Lemon case, restated Lord Diplock's five characteristics as the simpler three-element classic trinity now standard in passing off actions.
- Passing off and trade mark infringement can be pleaded together where the plaintiff has both a registered mark and separately established goodwill.
A Practical Example
A well-known regional brand of packaged snacks, sold for years in a distinctive yellow-and-red wrapper under the name "Golden Crisp," has built strong goodwill among local consumers. A new manufacturer begins selling a similar snack in a nearly identical yellow-and-red wrapper under the name "Golden Krisp," at a lower price, causing many customers to pick up the new product believing it to be the original. The original manufacturer has a valid claim in passing off: it has established goodwill in its distinctive name and get-up; the new manufacturer's adoption of a deceptively similar name and packaging is a misrepresentation likely to confuse customers, even if it was not proven to be a deliberate copy; and the confusion causes damage to the original manufacturer's goodwill and sales. The original manufacturer can seek an injunction restraining further use of the confusingly similar packaging and name, along with damages or an account of profits for the loss already suffered. If the original manufacturer had also registered "Golden Crisp" as a trade mark, it could additionally bring a claim for trade mark infringement, but the passing off claim would remain available regardless of registration, since it protects the goodwill built up through actual use and reputation in the market.
Quick Revision Points
- Passing off = common law tort protecting a trader's unregistered goodwill from deceptive misrepresentation by a rival trader.
- Classic trinity: goodwill, misrepresentation, damage.
- Erven Warnink v Townend (1979) — the Advocaat case; Lord Diplock's five-point formulation of passing off.
- Reckitt & Colman v Borden (1990) — the Jif Lemon case; restated the test as the modern three-element classic trinity.
- Remedies: injunction (primary), damages, account of profits, delivery up/destruction of infringing material.
- Passing off = common law, no registration needed; trade mark infringement = statutory, requires a registered mark.
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