In Canada and the United Kingdom, there is something called a “Passing Off Claim.”
Passing off is when a person or company infringes on a trademark or goodwill of another individual or person. It is a claim under Trademark law.
Of course, trademark laws are the most complex litigation, and often go on for years and cost a lot of money. Make sure to get legal advice from a lawyer that focuses on trademark litigation before starting a claim.
If you wish to start a passing off claim, or if you need to defend one, contact us. You can fill out the form on the side of this page. We have lawyers in British Columbia, Alberta, and Ontario.
Passing off happens when someone deliberately or unintentionally passes off their goods or services as if it belonged to another party. This action of misrepresentation often damages the goodwill of a person or business, causing financial or reputational damage.
What Is Required For The Claim?
Passing off claims is very difficult. There are three different parts to the claim.
You need to own the trademark, copyright, or goodwill that you put into the product, service, or name. It needs to be something that you can own.
Someone needs to have purposely deceived the public that they were reaching out to your company. Watch out for disclaimers or language. It needs to be obvious they are trying to steal your goodwill.
This is often the hardest part. You will need to prove the damage. You will have to get an idea of how much revenue was stolen.
Let’s offer a simple example. Your company sells the child’s toy “Baby Shark Fingerlings.” A Google search shows that this product is sold online by Walmart and Best Buy.
Let’s say both Best Buy and Walmart give you a 10% royalty for every Baby Shark Fingerlings that they sell.
Suddenly, you see a company called “Shanghai Online Sales.” They list Baby Shark Fingerlings as a product they carry.
Walmart sells your product for $8, and Best Buy for $20. However, Shanghai Online Sales (a company we made up), sells it for $2.
Even more worrying, Shanghai Online Sales doesn’t have a royalty agreement with you. If something like this happened to you, we have litigation lawyers in China that can help.
Passing off tort
It is very hard to win a passing off lawsuit if you don’t have something tangible. You really need something like a trademark, product, or something like a sign.
It is not required that the trademark be registered. Although if it’s an unregistered trademark, the claim is even harder.
The damages need to be real. In the Baby Shark Fingerlings example, you could get a court order for disclosure around their sales. If they sold $1 million of products, that’s the amount of damages you would be seeking.
If you are wanting to file a claim under the passing off tort because someone created a profile of you online, that’s very hard. What kinds of damages were there?
For example, if you Google “Alistair Vigier” you will see there are a number of unauthorized websites. The first is Google itself, which has indexed our information.
Then there is TNB, Fandom, Alignable, and many others. The Better Business Bureau even creates a profile for everyone. It doesn’t matter if you want it or not.
Google has been sued countless times. Many people want to get their information taken off Google.
Lawsuits For Trademarks | Passing Off Claim
You can apply to the courts for the following things. This could be an injunction to get your products or goodwill taken down. This is easier than seeking damages.
You can also seek damages.
It can be assumed the response to the notice of civil claim would be that there is no trademark. Also, that the issue in question is not distinctive, and that you don’t own it.
Further, that there are no damages. Don’t forget, you have the burden of proof as the plaintiff.
Canada’s Trade-marks Act | Passing Off Claim
No person shall direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada
In conclusion, the easiest way to defend a passing off claim is to make it clear that you are not the product or service.
You can list some information, and then say something like “If you are interested in another product, see this…” Make it so there is no confusion.