Intellectual Property and Passing Off

The common law tort of passing off is a legal action designed to address the situation where there is a wrongful use by person “A” of person “B’s” brand, IP, reputation, goods or services for the purpose of benefitting person A at the expense of person B.

It involves issues of misrepresentation, misleading and deceptive conduct.

Apart from the common law remedies, the Competition and Consumer Act 2010 (CCA) creates a statutory tort that can be used in addition to, or in substitution for, the common law tort of passing off. For example, section 18 of the Australian Consumer Law (which is contained in the CCA) prohibits a person, in trade or commerce, from engaging in conduct, which is misleading or deceptive or is likely to mislead or deceive.

Generally, conduct will be misleading or deceptive if it induces error, or is capable of inducing error, in an ordinary reasonable person.

Passing off can protect a person's goodwill (or brand reputation) which is built-up in relation to specific goods or services and which attracts customers.

Types of passing off, such as a misrepresentation that one person's goods and services are those of another could amount to a breach of the CCA. Where a person is found to have breached the CCA, the affected party may be entitled to remedies including injunctions and/or damages.

Contact Greyson Legal for information or advice about intellectual property law. E: mail@greysonlegal.com.