Journal of Intellectual Property Law & Practice Advance Access originally published online on March 30, 2006
Journal of Intellectual Property Law & Practice 2006 1(6):413-422; doi:10.1093/jiplp/jpl043
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© The Authors (2006). Published by Oxford University Press. All rights reserved
Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by the back door?
Legal context. This article addresses the scope of the tort of passing off in English common law.
Key points. The scope of passing off has traditionally been limited to confusion at the point of sale. Developments in market practice and trade mark law may argue in favour of extending that scope to cover both pre- and post-sale confusion. However, such an extension raises commonly voiced concerns about the introduction of a general tort of unfair competition into English law. This article considers the specific issue of pre-sale confusion and concludes that there is both the need and the scope to bring it within reach of passing off. To do so would not amount to the introduction of a general tort of unfair competition, but would be entirely consistent with the rationale which has always been the foundation for the tort.
Practical significance. The conclusion advocated in this article would expand the range of conduct on which passing off claims could be based and would increase the protection afforded to the owners of famous brands.
*The authors, Associates in the Intellectual Property Department of the London office of Baker & McKenzie LLP, would like to thank their colleagues Sarah Lynam, Francesca Richmond, and Clare Horvath for their assistance with this article.