The tort of passing off is established in common law, but has adapted and expanded to restrain and define a broad range of conduct. An act of “passing off” is essentially an illegal attempt to pass off one’s product as that of another. The plaintiff must prove three things in order to successfully show that an act of passing off has occurred:
(1) The goods or services of the plaintiff are distinguishable from competitors in the marketplace,
(2) The misrepresentation by the defendant of products offered allowed the public to believe that the defendants products were that of the plaintiff, and
(3) The plaintiff has suffered damages as a result of that misrepresentation.
However, if the defendant is able to satisfy the court that he or she was unaware of the trademark of the plaintiff, and that as soon as the defendant became aware of the trademark, he or she ceased to use said trademark in relation to the goods or services to which it was used by the plaintiff, than damages may not be awarded on the plaintiff to be paid by the defendant.
A passing off suit can be brought in civil court and some specific examples of acts that may be charged include:
- A misrepresentation that one person’s goods are those of another,
- A misrepresentation that a connection exists between a person’s goods and those of another when there is no actual connection,
- A misrepresentation that one person’s goods are of a particular class or quantity,
- Using images or representations of a character or person to suggest an endorsement or connection between that person or character with the goods when there is no actual connection and/or endorsement.
When bringing charges regarding one of these actions, the plaintiff has the duty to show the Court that there was both knowledge and intent to commit an act of passing off.
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