The 3 elements which must be satisfied to prove Passing Off are as follows:-
- one party has goodwill or reputation in the logo or design which they claim the other party is passing off as their own;
- there is a misrepresentation to the public whether intentional or not i.e. use of an identical or similar logo or design; and
- damage could be or has been caused i.e. loss of trade in that the other business is taking customers which would have come to the business which is being 'passed off'.
Generally, 5 years use of a logo or design is required in order for goodwill to be established. However, if a logo or design "takes off" and becomes well known very quickly, requisite goodwill can be established on a shorter period of use.
Using the ™ symbol next to an unregistered Trade Mark indicates that the mark is being used as a mark of trade (or 'trade mark') even though it is not registered as a Trade Mark. This acts as a warning to potential infringers that the owner of the mark will be litigious should the same be used.