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What is passing off?
You can still protect your mark even if it is not a registered trademark. This is through the common law action of “passing off”.
The underlying principle behind this action is that “a man is not to sell his goods under the pretence that they are the goods of another man”.
In order to succeed in a claim for passing off, a claimant must prove:
- Its goods or services have goodwill attached to them i.e. they have a particular image and reputation attached to them which enable the public to easily recognise those particular goods or services;
- There has been a misrepresentation to the public (which does not have to be intentional) which would lead, or is likely to lead, the public into believing that the goods or services on offer are those belonging to the claimant; and
- There has been damage caused to the goodwill or reputation of the claimant.
What remedies are available for passing off?
There are several remedies available when a claim of passing off has been successfully established:
- An interim injunction can be obtained before a full trial which prevents the defendant from continuing to “pass off” their goods or services;
- Delivery up and/or disposal of the infringing goods;
- Damages for loss of sales or damage to goodwill;
- An account of profits which provides for the defendant to pay to the claimant a proportion of the profits it made as a result of the infringement; and
Our Approach to Passing Off Claims
Passing off claims can be extremely complex and challenging to fight.
From our initial discussion, we will explore all of the potential options available and provide you with an effective legal strategy.
There are different remedies available for passing off claims such as damages, injunctions or an account of profits however these will all depend on the context of your situation.
Our award-winning legal team will make sure that you are kept informed and confident about the action we are taking.
The decision process will be firmly in your hands, with our full legal resource available to you at any time.
Our Experience with Passing Off Claims
Safeguarding the CRONUTS Concept – Enforcing International Trademark Rights for a Leading New York Pastry House
We act for a New York-based pastry house which invented the CRONUTS products sold worldwide.
We represent our clients' interests in the UK and Europe and are retained to enforce the clients' international trademarks.
Our work requires us to trace and stop manufacturers and generally assist the client in policing its IP rights on a daily basis.
Why Choose Our Intellectual Property Solicitors?
- Our intellectual property experts advise clients on a broad range of intellectual property matters, from initial registration and exploitation to protection and enforcement.
- Our specialist IP litigation team is also highly experienced in handling business disputes involving intellectual property.
- Myerson is a member of the Intellectual Property Lawyers Association (IPLA), an association of law firms with an established intellectual property office. Our membership provides our clients and us with access to a wealth of knowledge and expertise in intellectual property.
- Through our many years of service, we have close working relationships with trade mark and patent attorneys and regularly liaise with them on a wide range of intellectual property issues, such as registering trademarks, patents and design rights, and when disputes arise concerning intellectual property rights. These working relationships are a key element of the service we offer to our clients.
- Myerson is also the Manchester and Cheshire law firm member for the MSI Global Alliance, a top 20 ranked international association of independent professional firms. As the IP matters we deal with often involve an international element, we can call upon the expertise and knowledge of our fellow MSI members to ensure that our client's global interests are protected.
Testimonials
Meet Our Intellectual Property Solicitors
Home-grown or recruited from national, regional or City firms. Our intellectual property lawyers are experts in their fields and respected by their peers.
Contact Our Experts
You can contact our lawyers below if you have any more questions or want more information:
0161 941 4000
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