Passing Off: UK Law, Real Examples, and Available Remedies

Understanding passing off in UK law

Passing off is a common law cause of action that protects businesses from unfair competition. Unlike trademark infringement, which relies on a registration, passing off protects unregistered rights. If another business trades under a name similar enough to yours that customers are confused about who they are dealing with, you may have grounds for a passing off claim regardless of whether you hold a registered trademark.

Passing off is one of the oldest forms of intellectual property protection in English law, with cases dating back to the 19th century. It remains highly relevant today, particularly for businesses that have built up reputation and goodwill but have not yet registered a trademark.

The three elements: goodwill, misrepresentation, damage

Every passing off claim must satisfy three requirements, established by the House of Lords in the landmark Jif Lemon case (Reckitt & Colman Products v Borden, 1990). These are often referred to as the "classic trinity."

1. Goodwill

You must prove that your business has acquired goodwill, the attractive force that draws customers to your business rather than a competitor's. Goodwill is tied to the trading name, brand, get-up (packaging, appearance), or other distinguishing features.

Evidence of goodwill typically includes length of time trading under the name, revenue and customer numbers, advertising and marketing expenditure, media coverage and press mentions, customer testimonials and correspondence, directory listings and online presence, and awards or industry recognition.

The stronger your evidence of goodwill, the stronger your claim. A business that has traded for ten years under a well-known name will have a much easier time than one that started six months ago.

2. Misrepresentation

You must show that the defendant's use of a similar name (or similar branding, packaging, or get-up) amounts to a misrepresentation. This means that a substantial number of the public are likely to believe that the defendant's goods or services are yours, or that there is some business connection between you.

The misrepresentation does not have to be intentional. Even an innocent or unintentional use of a similar name can constitute passing off if it causes confusion. However, deliberate copying of a competitor's name or branding makes a claim much easier to prove.

Key factors in assessing misrepresentation include the degree of similarity between the names or branding, whether the businesses operate in the same industry or sector, whether they target the same geographic area, and whether there is evidence of actual confusion among customers.

3. Damage

You must show that you have suffered, or are likely to suffer, damage as a result of the misrepresentation. This can take several forms: lost sales diverted to the defendant, damage to your business reputation if the defendant provides inferior goods or services, dilution of your brand's distinctiveness, or the loss of licensing opportunities.

In practice, once goodwill and misrepresentation are established, damage is usually presumed. Courts recognise that confusion in the marketplace inherently harms the claimant's business.

Real examples from UK case law

Jif Lemon (Reckitt & Colman v Borden, 1990)

The most famous passing off case involved the lemon-shaped containers of Jif lemon juice. Reckitt & Colman had sold lemon juice in distinctive yellow plastic lemons for decades. When Borden launched a similar product in a nearly identical container, the House of Lords held this was passing off. The shape of the container had acquired goodwill, and the similar packaging was a misrepresentation likely to cause confusion.

Phones4U (Phones 4u Ltd v Phone4u.co.uk, 2006)

The mobile phone retailer Phones4U successfully brought a passing off claim against a company operating the website phone4u.co.uk. Despite the slight difference in spelling, the court found that the defendant's use of the name created confusion and diverted customers from the claimant's business.

Vodkat (Diageo v Intercontinental Brands, 2010)

Diageo, which owns the Smirnoff brand, challenged a product called "Vodkat" that was packaged and marketed to look like vodka but contained a much lower alcohol content. The court found this amounted to passing off, as the packaging and name misrepresented the product to consumers.

Hotel Chocolat (Hotel Chocolat v Chocolate Hotel, 2009)

Hotel Chocolat, the premium chocolate retailer, successfully challenged a business called "Chocolate Hotel" that operated in the same sector. Despite the names being reversed, the court found sufficient similarity to cause confusion among consumers.

Remedies available

If you succeed in a passing off claim, the court can grant several remedies:

Injunction

The most common remedy. The court orders the defendant to stop using the infringing name, branding, or get-up. This can be an interim injunction (temporary, pending trial) or a final injunction (permanent). Interim injunctions are particularly valuable because they stop the damage while the case is being decided.

Damages

The court can award financial compensation for losses you have suffered. This is calculated based on lost profits, diverted sales, and damage to your goodwill. Alternatively, you can elect for an "account of profits," which requires the defendant to hand over the profits they made from the passing off.

Delivery up or destruction

The court can order the defendant to hand over or destroy infringing goods, packaging, marketing materials, and domain names.

Costs

The losing party is typically ordered to pay a substantial portion of the winning party's legal costs, though full cost recovery is unusual.

Where to bring your claim

For most small business disputes, the Intellectual Property Enterprise Court (IPEC) is the best option. IPEC was specifically created for smaller IP cases and has a costs cap of 50,000 pounds. This means that even if you lose, your liability for the other side's legal costs is capped at that amount.

Larger or more complex cases may need to be heard in the High Court, where costs are uncapped and the process is more formal.

Why you should still register a trademark

While passing off provides important protection, it has significant limitations compared to trademark infringement claims. Proving goodwill requires extensive evidence gathering, the outcome is less predictable, cases take longer and cost more, and you cannot use it proactively to oppose trademark applications.

A registered trademark costs from 170 pounds and provides clear, enforceable rights from day one. It should be considered essential for any business that is serious about protecting its name.

Check your position now

Unsure whether another business is trading too close to your name? Run a free brand scan at GuardMyBusiness to search Companies House, trademark registers, domain databases, and the web simultaneously. If you find potential conflicts, our Full Investigation report provides the evidence and analysis you need to assess your options.