Businesses invest substantial time and resources in building brand identity, reputation, and customer loyalty. When another party uses a similar name, logo, or branding, the affected business may need to consider legal action. In the UK, two of the most common routes for protecting brand rights are passing off and trade mark infringement.
Although both causes of action are concerned with protecting goodwill and preventing consumer confusion, they are legally distinct. Understanding the difference between passing off and trade mark infringement is essential when assessing the strength of a claim, the evidence required, and the remedies available.
What is Trade Mark Infringement?
Trade Mark infringement arises where a registered trade mark is used by another party without consent in a way that conflicts with the rights granted by registration. In the UK, trade mark rights are principally governed by the Trade Marks Act 1994.
A registered trade mark may protect a business name, logo, slogan, shape, colour, sound, or other sign capable of distinguishing goods or services. Registration gives the owner an exclusive right to use the mark for the goods or services covered by registration.
A trade mark infringement claim may arise where an unauthorised party uses:
- An identical sign for identical goods or services;
- An identical or similar sign for identical goods or services, where there is a likelihood of confusion; or
- A sign identical or similar to a trade mark with a reputation, where the use takes unfair advantage of, or is detrimental to, the distinctive character or reputation of that mark.
The key advantage of trade mark infringement proceedings is that the claimant can rely on a registered statutory right. There is no need to prove goodwill in the same way as in passing off claim, although evidence of reputation may still be relevant, particularly in cases involving well-known marks.
What is Passing Off?
Passing off is a common law cause of action. It protects the goodwill of a business from misrepresentation by another party. Unlike trade mark infringement, passing off does not require registration. It can therefore be particularly important where a business has not registered its brand as a trade mark or where the relevant branding falls outside the scope of an existing registration.
To succeed in a passing off claim, the claimant must establish the classic “trinity” of elements:
- Goodwill: the claimant must show that its goods or services have acquired goodwill or reputation in the relevant market.
- Misrepresentation: the defendant must have made a misrepresentation, whether intentional or not, that is likely to lead the public to believe that its goods or services are those of the claimant, or relate to the claimant.
- Damage: the claimant must show that it has suffered, or is likely to suffer, damage as a result of the misrepresentation.
Passing off is often more evidence- heavy than trade mark infringement. The claimant must prove actual goodwill, usually through sales figures, marketing expenditure, customer recognition, press coverage, reviews, website traffic, or witness evidence.
Key Differences Between Passing Off and Trade Mark Infringement
The main distinction is that between trade mark infringement protects a registered right, while passing off protects goodwill.
In a trade mark infringement claim, the starting point is the registered trade mark and the scope of its specification. The court will examine the similarity between the marks, the similarity between the goods or services, and whether there is a likelihood of confusion or unfair advantage.
In a passing off claim, the focus is broader. The court considers whether the claimant has protectable goodwill and whether the defendant’s conduct amounts to a misrepresentation that causes damage. This may include similarities in names, branding, packaging, website presentation, advertising, or overall business get-up.
Another practical difference is certainty. A registered trade mark provides a clearer legal basis for enforcement. Passing off can be powerful, but it is generally less predictable because the outcome depends heavily on factual evidence of goodwill, confusion, and damage.
Examples of Passing Off and Trade Mark Infringement
A trade mark infringement claim may arise where a competitor uses a logo that is confusingly similar to a registered trade mark for the same type of product. For example, if a clothing brand owns a registered logo for apparel, another business using a highly similar logo on similar clothing could infringe that registration.
A passing off claim may arise where a local restaurant uses a name, menu design, and branding similar to an established restaurant, causing customers to believe the two businesses are connected. Even without a registered trade mark, the established restaurant may have a claim if it can prove goodwill, misrepresentation, and damage.
In many brand disputes, both claims are pleaded together. This allows the claimant to rely on registered rights while also advancing a broader case based on reputation and goodwill.
Remedies Available
The remedies for passing off and trade mark infringement are broadly similar. They may include:
- An injunction to prevent further use of the offending sign or branding;
- Damages or an account of profits;
- Delivery up or destruction of infringing goods, packaging, or materials;
- Disclosure or information about the extent of infringement;
- Publication of a judgment or corrective statements in appropriate cases; and
- Recovery of legal costs, subject to the court’s discretion.
Interim injunctions may also be sought in urgent cases, particularly where continued use of the disputed branding could cause immediate and serious harm.
Which Claim is Stronger?
The stronger claim will depend on the facts. Where there is a valid registered trade mark covering the relevant goods or services, trade mark infringement is often the more straightforward route. It provides a defined statutory right and may reduce the evidential burden.
However, passing off remains valuable where no trade mark has been registered, where the registration is narrow, or where the dispute concerns broader branding, get-up, or commercial presentation. Passing off can also protect unregistered brands that have built sufficient goodwill in the UK market.
Conclusion
Passing off and trade mark infringement are closely related but distinct forms of brand protection under UK law. Trade mark infringement depends on the existence and scope of a registered trade mark, while passing off protects goodwill against misrepresentation and damage.
For businesses, the most effective brand protection strategy is usually proactive: register key trade marks, monitor the market, preserve evidence of reputation, and act promptly when misuse occurs. A well-maintained trade mark portfolio, supported by evidence of goodwill, places a business in a stronger position to prevent confusion, protect reputation, and enforce its commercial identity.
How to get in contact
To find out more or if you require assistance with these matters, speak with our Intellectual Property Team on +44 (0)204 600 9907 or email info@culbertellis.com.
Accurate at the time of writing. This information is provided for general information purposes only and should not be relied upon as legal advice.
