The tort (or delict in Scotland) of passing off relates to misrepresentations made by one trader that damages or may damage the goodwill of another. It can be used to protect unregistered business and product names, logos and "get-up."
The "classic form" of passing off is generally defined by reference to three requirements:
- Goodwill in the UK attached to goods or services
- A misrepresentation by the defendant to the public (intentional or not) leading the public to believe its goods or services are those of (or connected with) the plaintiff
- The plaintiff suffers or likely to suffer damage due to that misrepresentation
However, the misrepresentation may be as to other matters, such as:
- That the plaintiff's goods are those of the defendant (reverse passing off)
- Misrepresentations as to quality
- False endorsement
The misrepresentation must be one which confuses or deceives the public or is likely to. Goodwill has been described as the "benefit and advantage of a good name or reputation..." or the "attractive force that brings in customers." Goodwill can be limited to certain areas/geographic locations.
An extended form of passing off requires:
- A misrepresentation
- Made by a trader in the course of trade
- To prospective customers or ultimate consumers
- Which is calculated to injure the business or goodwill of another, ie, such injury must be reasonably foreseeable
- Which causes actual damage to a business or goodwill
There are four types of design rights in the UK: registered and unregistered UK design rights, and registered and unregistered European Community design rights.
A registered design and a Community unregistered design can be the whole or part of a product resulting from features of lines, contours, colors, shape, texture or materials of a product or its ornamentation. This can include packaging, get up, graphics and typefaces parts of products, icons, maps, web design etc.
Registered designs and Community unregistered designs must be new (not previously disclosed or available to the public anywhere in the world) and have individual character (creating a different overall impression on the "informed user" taking into account design freedom). There are exceptions to this and features dictated by function (must fit and must match exceptions) cannot be protected.
To obtain registered design right protection, it is necessary to register either with the UK Intellectual Property Office (UKIPO) or EUIPO (for a Community registration). The UK is a "first to file" system, although a registration may be refused or revoked if it conflicts with prior rights. Unregistered design rights arise automatically.
The proprietor of the design may prevent any use of the design or any design which does not produce a different overall impression on the informed user (taking into account design freedom). To infringe unregistered Community design right the defendant must have copied the design. Copying is not a requirement to infringe registered design rights.
The regime for subsistence and infringement of UK unregistered design right is different. The right subsists in the shape or configuration of the whole or part of an article that is original and not commonplace, recorded in a design document or the subject of an article made to the design and created by a qualifying person. A key difference is that UK unregistered design right does not protect surface decoration. The UK unregistered design right does not protect methods or principles of construction and is subject to an exception for use in relation to products which must fit or must match the protected design.