Common Law Tort of Passing Off

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A question that inevitably arises is whether unregistered trade marks are afforded protection in South Africa and if so, to what extent. South African trade mark law is hybrid legal system governed by common law and various statutory law enactments.

South Africa is a first to use country and therefore, trade mark registration is not mandatory for the purpose of obtaining trade mark protection and defending one’s right against the unauthorised use of a mark.  Unregistered trade marks are afforded protection and can be defended under the common law tort of passing off.

Passing off occurs when there is a false representation (misrepresentation) directly or indirectly by a trader to the public that his business is that of a competitor, or that it is associated with that of a competitor.

In order to succeed with a claim based on passing off the following key elements need to be established:

  1. A goodwill or reputation in the business:

The onus is on the business to prove that it has built up a considerable reputation in the particular industry and accordingly acquired substantial common law rights in the relevant mark.

  • That there has been a a misrepresentation, whether direct or indirect, that is likely to confuse the public:

There must be a likelihood that members of the public in the relevant sector will be confused and/or deceived into believing that goods or services of the trader is associated with, or endorsed by a competitor.

  • That such misrepresentation has caused, or is likely to cause, damages to the goodwill or reputation of the business:

If such confusion or deception occurs, there must be a chance that the business stands to suffer irreparable damages to the goodwill or reputation which vests in the mark. 

Passing off and trade mark infringement are both actions trade mark owners may rely upon to enforce or defend their rights.  Passing off claims may be a difficult and costly procedure to enforce as proving the manifestation of these key elements are not as straightforward as it may seem.  Accordingly, trade mark owners are advised to obtain statutory law protection by way of registration as oppose to relying on their common law rights. 

In summary, some key difference between passing off and trade mark infringement are depicted below:

Passing off:Registered rights:
Common law remedy of passing off.Statutory law remedy
Concerns itself  with the protection of unregistered trade marks.Concerns itself  with the protection of registered trade marks.
Rights are established gradually through use.Protection is available immediately on registration.
It is essential to prove the key elements (goodwill, damage and misrepresentation).Registration is sufficient.  

Authors: Cherizé de Lange and Sharon Osborne