Passing off
Remember that trade mark infringement applies only when you have a registered trade mark. We also read, however, that you can have common-law rights in a trade mark. So how do you protect your common-law rights if someone starts using a brand name similar to yours?
This is where we talk about ‘passing off’. It is a claim which has the following two basics:
- First, your brand name must have a reputation in the marketplace;
- Second, the defendant’s brand must be similar enough to your brand as to be likely to cause consumers to be deceived or confused.
We read about ‘likely to deceive’ and ‘likely to cause confusion’ in Primary infringement.
Passing off is not restricted to trade marks. Such a claim is centred on a misrepresentation — in other words, to give a false impression of something. It does not matter how that misrepresentation is made, for the law says it is wrong to give false impressions about your goods, your services, and your business in general.
Interdicts have been given on the grounds of passing off in respect of:
- a braai which was shaped exactly like a Weber braai;
- a bus (yes, a bus) which was shaped and looked like a Mercedes Sprinter bus;
- a petrol engine to power lawnmowers which looked like a Honda engine;
- hair care products called Hollywood Curl, because the brand name Hollywood was very well known in relation to cosmetics;
- biscuits called Tea Lovers because the packaging looked very much like the packaging of the famous Tennis biscuits;
- a shopping centre named Holiday Inn.
There is an important difference between passing off and statutory infringement. When considering passing off, the judge will look at everything about the goods (or business) to assess whether there is a misrepresentation. With statutory infringement, the judge just considers the offending trade mark.