What is the difference between trademark infringement and passing off?
What is the difference between trademark infringement and passing off?
Difference between Passing Off and trademark infringement. Trademark provides protection to registered goods and services whereas Passing Off provides protection to unregistered goods and services. Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.
What is passing off in trademark law?
Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another. At first it was restricted to the representation of one person’s goods as those of another.
What happens when trademark infringement?
When infringement occurs, a trademark owner (the plaintiff) may file a lawsuit against the infringing user of the same or similar mark (the defendant) to prevent further use of the mark and collect money damages for the wrongful use.
What is infringement and passing off?
In an action for infringement, the Plaintiff on account of it being a registered trade mark in dispute claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a person of his goods as those of another, in essence, is an action of deceit.
Is passing off illegal?
Passing off does not confer monopoly rights to any names, marks, get-up or other indicia. Instead, the law of passing off is designed to prevent misrepresentation in the course of trade to the public, for example, that there is some sort of association between the businesses of two traders.
Is passing off a trademark?
Passing off is similar to trade mark infringement, but applies to protect unregistered rights associated with a particular business, its goods or services. Passing off actions can be brought in a wide range of situations, including to protect business names and features of “get-up” or “trade dress”.
How do I protect my trademark from infringement?
The 5 Things You Must Do to Protect Your Trademark
- Do Your Homework. The USPTO won’t register your trademark if there is a “likelihood of confusion” with another registered trademark.
- Prepare and File a Trademark Application.
- Respond Promptly to Office Actions or Oppositions.
- Monitor Your Trademark.
- Maintain Your Trademark.
What are the elements of a trademark infringement claim?
Thus, “use,” “in commerce,” and “likelihood of confusion” are three distinct elements necessary to establish a trademark infringement claim.
Can you sue for passing off?
In each case of passing off, the key issue is the danger of misrepresentation as to the origin of goods or services. If someone leads consumers to believe that their goods or services are connected with another business when they are not, they may give the other business grounds to sue for passing off.
How do I protect against passing off claim?
The key defences are:
- Use of defendant’s own name.
- Use other than in the course of trade.
- Claimant cannot show sufficient goodwill.
- Claimant’s mark is not distinctive.
- Claimant’s mark is generic.
- Claimant’s delay in taking action.
- No proof of misrepresentation.
What’s the difference between passing off and trademark infringement?
Trademark Infringement and Passing Off are both related to the infraction of rights of the trademark user/ owner, however, certain differences between the two are noted as below: 1. Trademark Infringement is a statutory remedy whereas Passing Off is a common law remedy.
What should I do if someone infringes my trademark?
The most common remedy for trademark infringement is an injunction, which is a legal tool that stops the adverse party from continuing their illicit use of a trademark, or damages, which provides monetary compensation in an attempt to correct the harms of the wrongdoing.
Can a unregistered trademark be protected in Canada?
Unregistered trademarks can also receive protection if certain conditions are met. This protection is a product of Canadian common law (that is, legal disputes that have been decided by courts of law) which has recognized the tort of passing off.
How is an action for passing off different from a statutory remedy?
An action for trade mark infringement is a statutory remedy and on the other hand, an action for passing off is a common law remedy. The use of the trade mark of the plaintiff, by the defendant, is also a prerequisite in the case of an action for infringement while it is not a necessity of an action for passing off.