The legal action of passing off for unregistered marks

It may still be possible to defend against the use of a mark even where that mark has not been registered with IP Australia. If an unregistered mark has earned a reputation or goodwill through use, it may be protected under the law of passing off.

Passing off protects against the misappropriation of a trader’s business reputation or goodwill by the misrepresentation of another trader. In other words, it prevents one trader from passing off another trader’s goods or services as his or her own. The law seeks to prevent any damage that may be caused to the reputation of a business by an unauthorised association.

To establish a case in passing off, a trader (the plaintiff) must prove three elements:

1. That their goods, business or brand name has an established reputation in the market in the relevant geographical area;
2. That the other person (the defendant) has made a misrepresentation, in the course of trade; and
3. That the trader (the plaintiff) has suffered or is likely to suffer damage as a result of this misrepresentation.

Under element 2, the misrepresentation must be one of the following:

• That the defendant’s product is the plaintiff’s product; or
• That there is a connection between the plaintiff and defendant’s goods or services, when one does not exist; or
• That the plaintiff and defendant’s goods or services originate from the same source; or
• That the plaintiff sponsors or endorses the defendant’s product; or
• That the defendant’s product shares some exclusive quality with that of the plaintiff, such as where the defendant’s goods are represented as being made in a particular way or in a particular place when they are not, but the plaintiff’s are.