Passing off – protect your products

Passing off – protect your products

Key Contact: Cordelia Payne

Author: Kate Francis-Hughes

You may have seen products for sale in supermarkets such as Aldi that look similar to those sold by high-end luxury retailers and wondered how they are able to do so; this is largely linked to what is known as “passing off”.

The law of passing off is governed by common law tort, this means there is no specific legislation surrounding this offence, instead it is safeguarded by an abundance of case law.

The underlying principle of passing off was established in the 1842 case of Perry v Truefitt:

A man is not to sell his own goods under the pretence that they are the goods of another man.”

The three elements of classic passing off:

  1. Goodwill or reputation attached to the goods or services
  2. A misrepresentation by the defendant to the public, whether intentional or not, leading or likely to lead the public to believe the goods or services offered by the defendant are the goods or services of the claimant
  3. Damage suffered by the claimant pursuant to the erroneous belief that the goods or services offered to the public were those of the claimant, as opposed to those of the defendant.

How can Aldi emulate products?

The main reason Aldi and other retailers are able to emulate the products similar to those created by their higher-end counterparts is enshrined within element 2 above; the misrepresentation must cause an element of confusion as to the origin of those goods.

It is unlikely that the public would confuse those goods that are, on most occasions, accompanied by a “sold out” notice in Aldi, with those goods sold by the likes of Jo Malone, Benefit, Elizabeth Arden, Nars or Moroccanoil. Without this element of confusion, the prospect of success for higher-end retailers hoping to bring a passing of claim against Aldi is particularly low.

The relatively recent decision in the case of Moroccanoil Israel Ltd v Aldi Stores Ltd [2014], in which Aldi successfully defended a passing off claim, serves as a welcome reminder to retailers that the fact that products are similar in appearance or name, does not necessarily mean that the public will be confused as to the origin of those products.

It could be argued that Aldi has now established something of a reputation for selling products that imitate higher-end retailers, meaning the likelihood of actual confusion is exceptionally slim because consumers know what they are paying for; a somewhat unique defence purely available due to Aldi’s distinctive business structure.

For more information on protecting your IP, speak to Cordelia Payne in our Intellectual Property team today.

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