How to protect your Business Name and Brand
WHAT IS PASSING OFF?
When Is Someone 'Passing Off' Against A Business Name?
The law of passing off stands to protect a trader's goodwill and business against copying, (Passing Off). In order for a passing off action to succeed, you will need to substantiate the following matters:
- A misrepresentation made by another, with respect to the business name, in the course of that particular trade.
- The misrepresentation is made to the principal customers or prospective customers.
- The misrepresentation does cause damage to the principal business or goodwill of which the business name has developed.
Although these elements may be present in an incident that constitutes 'Passing Off' it usually only succeeds when it is acted upon as soon as you become aware of the conflicting business name within the proven market area.
WHAT DOES NOT CONSTITUTE 'PASSING OFF'?
The Register is unable to assist in matters that do not involve the 'Passing Off' of a business name. In order for a successful claim all of the above criteria need to be present. In addition to this we will not pursue a claim for 'Passing Off' if it is a different action, for example,
- If you are involved in a partnership dispute.
- If you have copied an existing trade mark and we were not instructed to do a trade mark search.
- If you are involved in a contractual dispute, or matters where a contract is, or was, in force.
- If you are involved in a conflict with previous business partners, employees, employers or franchisees, or any other business related conflict.
- If you are involved in a conflict between relatives.
- Any matter not approved by the National Business Register Legal Counsel.
- Domain Name disputes.
WHAT IS REQUIRED IN ORDER TO PROVE 'PASSING OFF'?
In order to pursue a successful claim of 'Passing Off' it is up to the individual to prove that damage will result from the misrepresentation by the other user. This comes in many forms, including,
- Written statements from both existing and prospective customers/suppliers, stating that the misrepresentation made by the other user, (in using the principal's business name), has prompted them into purchasing goods or services that they believed were that of your business.
- Relevant advertising statements/packaging that indicate that a misrepresentation is being made and that confusion is occurring.
- Photographic evidence of the of the existing business name from the other user.
- All evidential requirements advised by us on being notified of a potential dispute.
WHAT IS THE PROCEDURE IN THE COURSE OF A 'PASSING OFF' ACTION?
There are five stages of procedure when a 'Passing Off' claim is made to The Register.
- 1.?The completion and return of the standard issue?'Passing Off' complaint form (pdf format - 327KB)?.
- 2.?An assessment is made of the validity of both the registered members registration particulars and the alleged 'Passing Off' claim, this includes.
- Ensuring the member's registration is valid, i.e. the registration is current and paid up to date.
- Ensuring that the registration holds no disclaimer against the alleged offending business name.
- Ensuring that the alleged 'Passing Off' has occurred during and not prior to, or in a lapse of, registration.
- Ensuring that all the factors required for a 'Passing Off' action are present.
- 2.1?The National Business Register cannot represent a member within a 'Passing Off' dispute when the member has previously instructed outside/external legal representation.
- 3.?The issue of a letter of notice to the alleged offending party stating that they are 'Passing Off' an established business name.
- 4.?The entry into general correspondence with the alleged offending party, or their solicitors, in protection of the registered member's business name. In the course of this action we will require evidence of misrepresentation and any damage caused, the criteria of which have been outlined previously.
- 5.?Once it is evident that the 'Passing Off' action cannot be progressed without resorting to litigation, the merits of a case are assessed by external Legal Counsel. If after careful consideration a case can proceed by litigation, then Counsel's fees are underwritten to proceed through the legal system to restrain the offending party using the registered member's existing name.
Please Note:?All costs in pursuing a ‘Passing Off‘ claim will be met by us providing all known matters about the dispute are disclosed at the outset. This includes any award order for costs made against you. It is therefore essential for your own protection that all matters are disclosed in full to enable Counsel to provide a fully informed opinion.
JUST HOW SUCCESSFUL IS NATIONAL BUSINESS REGISTER IN PROTECTING A MEMBER'S BUSINESS NAME?
Since 1984 we have successfully prevented thousands of organisations from copying a registered member's business name.
We can boast a highly professional legal team who are specialists in their field. Our business exists to protect members trading names and for a small annual fee you have access to, and support from internal and external specialists who will endeavour to resolve your problem without any additional legal fees to you.
Since 1984, the company has spent in excess of ￡75,000 on individual cases and has paid over ￡1 million in legal fees and expenditure in protecting our members' interests.