Defenses to an Action for Passing Off

There are numerous potential defences to an action for passing off. Some of the common defences are described below.

The Lack of Distinctiveness

If a plaintiff does not show that the “get-up” under which its goods or services are offered to the public is recognized by the public as distinctive of its goods or services, it will not succeed. Further if a defendant uses the characteristic features of the get-up commonly used in the relevant trade this may be a defense to a claim for passing off.

Concurrent Right

If a defendant has been using the same trademark, get-up or trade name as the plaintiff with equal claim to its independent use, it will be difficult for the plaintiff to succeed unless it can be shown that the defendant has extended its use into the plaintiff’s area of business and beyond the area where the defendant has carried on business. 

Descriptive Words or Marks

The applicable principles are similar to those under the Trademarks Act. A descriptive word or mark is not usually capable of being protected in an action for passing off unless it can be shown that it has acquired a secondary meaning and associated goodwill. 

The onus of proving the acquisition of secondary meaning, rests on the plaintiff, and is a heavy one when the mark in question is a descriptive word. To satisfy the onus it is not sufficient to show that mark is distinctive in the channels of trade as, for example, to the manufacturer or wholesaler; it must be distinctive to probable purchasers including the ultimate consumer. If the descriptive word or mark is also the name of the goods themselves, it will be extremely difficult for the word to acquire a secondary meaning. 

In addition, if a plaintiff is relying on a descriptive word or mark, relatively small differences in the word or mark used by the defendant should be sufficient to avoid making a misrepresentation. 

If the plaintiff’s descriptive word or mark is not used as a trademark, but instead as the name of the type of good in issue, it may be generic and therefore extremely difficult to protect. In cases where the question is whether a particular word or mark has been used to distinguish the goods of a particular manufacturer, or whether it has been used principally as a description or name of the goods themselves, the plaintiff’s whole course of conduct must be considered in order to determine whether the word or mark has lost its distinctiveness.

Geographical Words or Marks

A trader is entitled to use the name of the locality where its goods are produced or where business is carried on, unless a plaintiff can show that the word or mark has acquired a secondary meaning in that locality and can satisfy the other requirements necessary to establish passing off.

Functionality

Like trademarks any combination of elements which are primarily designed to perform a function cannot be protected through a claim for passing off. The fact that the party seeking protection obtained a patent relating to the article in question is evidence of functionality. 

Use of a Registered Trademark

If the alleged passing off relates to the defendant’s use of a registered trademark in association with the goods or services of the registration, the existence of the registration will be a defence to a claim for passing off because of the rights granted under the Trademarks Act.

Use of an Individual’s Own Name

An individual defendant has a right to use his or her own name and the fact that confusion may occur does not constitute passing off by itself. However, if confusion occurs, which is brought to the attention of that defendant, they are under an obligation to take reasonable care to qualify the representation implied in his or her conduct to avoid confusion. 

Plaintiff’s Own Goods

It is not passing off to use the plaintiff’s name or mark in connection with goods that are the plaintiff’s original goods. But a trader cannot represent that goods, which are the plaintiff’s goods, are of a particular class or quality if they are not. For example, it is actionable to offer goods of inferior or deteriorated quality as the plaintiff’s original goods or the plaintiff’s goods in a materially altered form as the original. The fact that notice of the difference is given to consumers at the time of sale may avoid a finding of passing off.

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John McKeown

Loopstra Nixon LLP.  

130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada

 jmckeown@LN.Law

437 290-5960

This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update please send me an email at jmckeown@Ln.Law

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