Passing off Definition

GLOSSARY

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What does Passing off mean?

Passing off is a law'>common law action used to protect unregistered trade mark rights in the UK. The three principal elements which must be demonstrated in order to succeed in a passing off case are goodwill, misrepresentation and damage.

View the related checklists about Passing off

Using IP as security: key issues—checklist

Using IP as security: key issues—checklist This Checklist is drafted from the lender’s perspective, and it is designed to highlight the key issues to consider and steps to follow when using IP as security, such as to: • consider the nature of the IP right • consider the type of security • consider ownership, duration, and third-party rights • consider validity and maintenance of the right • value the IP right • consider associated rights and property • register the security at the appropriate registry For further information on taking or perfecting security over IP, see: • Practice Notes: Taking security over intellectual property rights, Taking security over intellectual property—practical points, Perfecting security over intellectual property rights and registering security at an intellectual property registry and Effect of registering security at IP registries on priority of security interests • Precedents: Assignment of intellectual property by way of security, Agreement for assignment of patent by way of security in pursuance of loan agreement: Encyclopaedia of Forms and Precedents (21(1)) [1172], Mortgage...

Trade mark licence—checklist

Trade mark licence—checklist How to use this Checklist This Checklist identifies the key terms typically included in a trade mark licence. It can be used as a checklist of issues to consider when drafting, reviewing or negotiating trade mark licences. For further information on the legal provisions underpinning trade mark licensing, and the formalities required, see Practice Note: Licensing intellectual property rights. For guidance on the practical points to take into account when drafting a trade mark licence, see Practice Note: Drafting a trade mark licence—a practical guide. This Checklist can also be adapted for use as a heads of terms to record basic agreed terms while a formal trade mark licence is being negotiated. For guidance on how to do this, see Precedent: Heads of terms—commercial contracts. Checklist schedule for proposed trade mark licence Points to consider Further information Notes (if any) (A) Key commercial considerations ☐ Parties Confirm which entities will be party to the agreement—identify which entity owns the trade marks (ie the licensor) and which...

Passing off—flowchart

Passing off—flowchart Passing off action Passing off is a common law action that is used to protect unregistered trade mark rights in the UK. The stages of the Flowchart cover establishing a claim for passing off covering: • the three essential elements of goodwill, misrepresentation, and damage • sending a letter of claim, issuing proceedings and applying for an injunction • commencing proceedings in the general Intellectual Property List or the Intellectual Property Enterprise Court sub-list in the Business and Property Court, in the Chancery Division at the High Court • case management including allocation, the case management conference and directions • disclosure and evidence including inspection, additional disclosure and survey evidence • trial preparation and post-trial activities such as election between damages or an account of profits • applications to appeal Stage 1—preparing to bring a claim and pre-action matters Claim preparation and pre-action matters—Practice Notes • Passing off—goodwill, misrepresentation and damage • Trade mark and passing off disputes—a practical guide • How to run an IP dispute...

UK trade mark application—flowchart

UK trade mark application—flowchart This Flowchart provides an overview of the UK trade mark application process. The first stage covers pre-application steps including obtaining clearance searches and considering barriers to registration. The second stage outlines the process beginning with submission of a trade mark application to the UK Intellectual Property Office (IPO) and ending with registration of the trade mark. Step 1—pre-application steps Relevant materials: • Trade mark transactions and management—overview • Practice Note: Trade mark registration—strategy • Practice Note: Absolute and relative grounds for refusal to register a UK trade mark • Practice Note: Managing a trade mark portfolio • Precedent: Trade mark search sheet • Precedent: Trade mark filing sheet • Practice Note: Trade mark coexistence agreements • Q&A: What do I need to know

Food advertising

Food advertising FORTHCOMING CHANGE: On 24 May 2024, the Digital Markets, Competition and Consumers Bill received Royal Assent, becoming the Digital Markets, Competition and Consumers Act 2024 (DMCCA 2024) and coming partly into force on that date. DMCCA 2024, s 251 (which is not yet in force) will revoke the Consumer Protection from Unfair Trading Regulations 2008 (CPUTR 2008), SI 2008/1277, which affects this Practice Note. Once revoked, the provisions presently contained in the CPUTR 2008 will be replaced by Part 4 of DMCCA 2024 (which largely replicates the requirements of the CPUTR 2008). This Practice Note will be updated for this change in due course. For a detailed comparison of the CPUTR 2008 and Part 4 of DMCCA 2024, see Practice Note: The Digital Markets, Competition and Consumers Act 2024—key provisions from a consumer protection perspective. This Practice Note considers the law and practice applicable to food advertising to consumers, including: • Regulatory regime overview • General considerations regarding food advertising • Health and nutrition claims...

Ireland—Remedies for trade mark infringement

Ireland—Remedies for trade mark infringement Types of remedy This Practice Note outlines the civil remedies available in Ireland to the proprietors of Irish and/or EU trade mark registrations where there has been trade mark infringement. The Trade Marks Act 1996 (Ireland) (TMA 1996 (IRL)) identifies remedies available for the infringement of trade marks in Ireland, while Regulation (EU) 2017/1001 (the EU Trade Mark Regulation) lays out the governing law surrounding EU trade marks. SI No 360/2006 European Communities (Enforcement of Intellectual Property Rights) Regulations 2006 (the 2006 Regulations) also provides a number of reliefs available to the owners of infringed trade marks, which will be discussed in turn. TMA 1996 (IRL), s 18(2) provides that: ‘In an action for infringement of a registered trade mark all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor as is available in respect of the infringement of any other property right.’ Article 130 of the EU Trade Mark Regulation provides that: • where an EU trade...

Discover our 184 Practice Notes on Passing off

Online brand protection—training materials

Online brand protection—training materials These training materials are template PowerPoint slides which show how businesses can protect their online brands. They include guidance upon protecting trade marks and domain names. It is intended that these slides will be used as a starting point for someone who needs to train others on brand protection. These slides can be amended as necessary to suit individual requirements, but will help the speaker by speeding up preparation times. The training materials are customisable. Click the link below to download the presentation. Contents • Terminology • The internet and key brand risks • Deciding on new branding • Managing an existing brand • Trade mark infringement and passing off actions: — Trade mark infringement — Passing off — Domain names — Keyword advertising — Objecting to other trade marks • Advertising practices • Defamation • Responding to a brand management crisis • Conclusion Purpose of slides/seminar The slides are intended for a general rather than specialist audience. It is anticipated...

Share purchase agreement—pro-buyer—corporate seller—conditional—long form

Share purchase agreement—pro-buyer—corporate seller—conditional—long form This Agreement is made on [insert day and month] 20[insert year] Parties 1 [Insert name of selling corporate entity] incorporated in [England and Wales OR [insert country of incorporation] OR with registered number [insert company number] whose registered office is at [insert address] (the Seller); 2 [Insert name of purchasing corporate entity] incorporated in England and Wales OR [insert country of incorporation] OR with registered number [insert company number] whose registered office is at [insert address] (the Buyer), and 3 [Insert name of guarantor entity] incorporated in England and Wales OR [insert country of incorporation]] with registered number [insert company number] whose registered office is at [insert address] (the Guarantor) [(each of the Seller, the Buyer and the Guarantor being a Party and together the Seller, the Buyer and the Guarantor are the Parties).] Background (A) The Company (as defined below) is a private company limited by shares and is incorporated in [England and...

Dive into our 149 Precedents related to Passing off

What are IP rights?

What are IP rights? Basic concept Most people are familiar enough with the idea that owning tangible property, such as a car or some land, carries with it some rights, such as not to have it stolen or damaged. So that people are incentivised to create things or new ways of doing something, the law provides rights to creators. These rights are to property, generated by someone's creativity, and they are similar to rights in property such as land—they can be sold, rented out or even mortgaged, and they cannot be trespassed on without the owner's consent. The owner has a right to keep other people away from exploiting this intellectual property (IP), for example stopping them selling the products containing the ideas protected by the IP. There are limits to that right to keep people away, because the intention is that the owner's exclusive rights should not extend so far that competition and free markets are stifled. Creative output could be viewed as a spectrum of activities,...

Is there any guidance or case law regarding whether there is a genuine use of a trade mark within the EU if a party provides their services in question outside of the EU, but those services can be booked from within the EU? By way of example, a hotel may be located outside of the EU but customers may book rooms to that particular hotel from within the EU

Is there any guidance or case law regarding whether there is a genuine use of a trade mark within the EU if a party provides their services in question outside of the EU, but those services can be booked from within the EU? By way of example, a hotel may be located outside of the EU but customers may book rooms to that particular hotel from within the EU For the purposes of this Q&A, we have assumed that the trade mark in question is registered in the EU, and that the hotel room referenced is booked directly with the hotel and not through a third party provider. The basic rule is that the trade marks system operates on a use it or lose it system. Trade marks must be used or if not used then the registrations are revoked. The absence of use must be for a clear five year period and there must be no 'proper' reasons for that non-use. Use can also be relevant in other respects,...

See the 78 Q&As about Passing off

IP weekly highlights—12 December 2024

This week's edition of IP weekly highlights includes: a hand-picked summary of news analysis, updates and new content from the world of IP. These highlights focus on the key rights of copyright and associated rights, database rights, trade marks and passing off, designs, and patents as well as covering issues relating to confidential information, know-how R&D and IP disputes all mainly from a UK and European perspective.

IP weekly highlights—5 December 2024

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