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introduction
rights
of action
summary
PASSING OFF
When another business entity adopts the same or similar name as your existing company, they are in effect "passing off" as you, and as a consequence their competing goods and services are passed off as yours also.
This competitor has managed to steal your business - and your business goodwill.
Of course passing off is more likely to occur where the two entities operate in the same line of business, and therefore the possibility of customers confusing the two companies is much more likely.
Before you bring an action against a competitor on the grounds of passing off, you must prove actual or probable damage to your business or reputation.FAIR TRADING ACT 1986
Section 9 of the Fair Trading Act 1986 prevents conduct in trade which is 'misleading or deceptive or is likely to mislead or deceive'. Unlike a passing off action, you are not required to prove damage to your goodwill.
In order to succeed in a claim, complainants need only to prove that the use of your name (or a similar name) is misleading or deceptive, or is likely to mislead or deceive people into thinking that the two entities are the same.
If you succeed in your action under (a) passing off or (b) the Fair Trading Act, you will obtain damages. Injunctive relief may also be granted to prevent the offending entity from continuing to operate under your name.
TRADEMARKS ACT 1953
If you wish to protect your name by obtaining proprietary rights in the name, you must obtain a registered trademark.
Once your trademark is granted, your company can prevent another entity from using your name in relation to goods and services which are:
'…similar to any goods or services in respect of which the trademark is registered if such use would be likely to deceive or cause confusion'.
Whether two trademarks are so similar as to cause confusion depends on surrounding circumstances, such as:
- The class in which the trademark has been granted
- The market in which that entity's goods can be bought and sold
- The character of those involved in that market.
You must bring an action as soon as your discover an infringement, or you will be deemed to have acquiesced to another entity using your trademark. Remedies include damages and injunctive relief.
[Read on to the trademarks summary
information] |
