Passing off (also known as palming off) occurs when a person intentionally causes a product or service to be confused with another for commercial gain. For example, if a person substitutes one product for another or deliberately infringes a trade mark belonging to another.


Under US law there are numerous statutes that are all of a larger statutory scheme known as the Lanham Act, found in Title 15 United States Code, Sections 1051-1127.


Section 1125 of the Lanham Act deals with the false designations of origin and false descriptions forbidden. This authorises a trade mark owner to obtain damages in a federal court lawsuit for infringement of an unregistered mark and other activities such as dilution, false advertising and passing/palming off - all of which the court have decided are forms of unfair competition.




Passing off is a common law action brought in tort (a civil wrong). The classic form of passing off is defined by the classical trinity - the three elements that make a successful action in tort for passing off.


The classical trinity of goodwill, misrepresentation and damage to goodwill can be misunderstood by readers and requires an explanation. To have a successful action for passing off, it is best to read and to look at several different dicta, but the starting point is always, for a UK action, the Jif Lemon [Reckitt & Colman Products Ltd v Borden [1990] case.


The Jif Lemon case is important in at least two respects. First, the House of Lords confirmed that each passing off case depended on its own facts. Secondly, the Lords reverted to the classical trinity for their definition of the elements of the cause of action. Lord Oliver put the matters a successful claimant must prove as follows:


(1) Goodwill -The Claimant must establish a goodwill or reputation attached to the goods or services which it sells or supplies.


(2) Misrepresentation - The clamaint must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the Claimant.


(3) Damages -The claimant must show that it has suffered or, in a quia timet action, that it is likely to suffer damage by reason of the Defendant's misrepresentation that the source of the Defendant's goods or services is the same as the source, or connected to the goods or services of those offered by the Claimant.


The above is known as the classic trinity.


If you suspect a website is infringing your registered trademark(s) or passing itself off as you, please contact Waheedan Jariwalla now on 023 8000 1093 or by email on


Waheedan can provide you with instant advice and can go on the record as acting for you within minutes of being instructed (provided all documents are made known and she is happy to act for you - i.e. no conflict to act).







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