This article will be of particular interest to both newly created businesses and well-established brands. If your business has earned goodwill by offering goods or services that attract customers because of their unique qualities, you should know there is another way, other than trademark and patent registration, to protect yourself. 

You might never have considered applying for trademark or patent registration, but the risk of another product threatening your life’s work—either after it hits the market or even earlier—could be a real concern. Even without formal patent or trademark protection, you may still have a legal option through a claim known as “passing off.”

Passing off

At its core, passing off protects the reputation—or goodwill—a business has built, giving the owner a way to take action against others who exploit the unique features of their product or service.

As such, passing off takes place when a business conducts itself in such a way that misleads the public into thinking that their goods or services are those of another business. The class of goods is not necessarily protected by trademark but is treated as such due to the exclusive categorisation of its members. In this context, members are the goods and services which possess certain characteristics that cannot be replicated by any other person outside their classification. For this to take place, said goods or services must have sufficient goodwill.

Take Champagne for example, a beverage made from Pinot Noir, Pinot Meunier, and Chardonnay grapes, produced in Champagne, in the northwest region of France, with a light sparkle and colour. Singularly, these characteristics mean little to the identification of goodwill. Collectively however, consumers buy this product under the assumption that it is as the name indicates, with all its traits and characteristics.

Goodwill

Goodwill is the reputation gained by the goods and services, the attractive force which brings in custom. This can be in the form of, but not limited to, the name, style or shape of packaging, a colour, and personal image. The timeframe to attract goodwill is dependent on the facts of the case. Additionally, goodwill must be attained within a provable geographical area, and the claimant must demonstrate that the breach has taken place within the geographical limits of its goodwill.

Misrepresentation

Furthermore, there needs be misrepresentation caused by the defendant to the public. An expressed or implied representation that the claimant’s goods and services are those of the defendant, which leads the public to believe the same.

Damage

Finally, damage to the identifiable goodwill must be incurred, suffered, or at the least foreseeable, by the claimant as a consequence of the misrepresentation. For example, provable financial loss in the form of diversion of sales, damage to reputation, loss of opportunity to expand.

Where your business has obtained goodwill by way of providing goods or services that have attracted the public to the brand due their traits and characteristics, patent and trademark registration are processes that should not be overlooked as preventive measures.

Should this become of relevance to you, we can assist you with:

  • Seeking an injunction to stop the misuse;
  • Recovering damages for your losses;
  • Claiming profits the other side made from passing off (instead of damages);
  • Getting an order to have the offending items handed over or destroyed; or
  • Securing a declaration of your intellectual property rights.

Griffin Law is a dispute resolution firm comprising innovative, proactive, tenacious and commercially-minded lawyers. We pride ourselves on our close client relationships, which are uniquely enhanced by our transparent fee guarantee and a commitment to share the risks of litigation.  For more details of our services please email justice@griffin.law or call 01732 52 59 23.

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