Trademark Assignment Essay Example | Topics and Well Written Essays - 4000 words

Trademark Assignment - Essay Example The definition and nature of the tort of passing off as well as the protection accorded the registration of a trademarks will best illustrate the significance of passing off since the introduction of the registered trademark system. This paper is therefore divided into two parts. The first part of this paper is committed to the definition and nature of the tort of passing off. The second part of this paper will examine the trademark registration system and will analyse how it runs parallel to the tort of passing off. I. The Tort of Passing Off A. Definition and Essential Elements of Passing Off Passing off is a common law concept created by judges. Lord Parker’s definition of passing off in Spalding v Gammage (1915) sets out the general significance of an action for passing off. Lord Parker defined passing off as a prohibition against the representation of one’s goods as those of another.3 A more detailed definition of passing off is provided in the Advocaat case in whi ch Lord Diplock’s definition encapsulates the essential elements of passing off. In this regard, passing off is required to be made by virtue of a misrepresentation. This misrepresentation must be made by a business trader operating in the course of his business dealings. The misrepresentation must also be made to consumers with respect to the goods and services provided by the trader. The misrepresentation must be such that it is designed to bring about harm to the goodwill or the business of a comparative business. The misrepresentation must bring about actual damages to the goodwill of business or must be likely to bring about damages.4 The essential elements of passing off which ultimately defines the tort of passing off are more particularly delineated in the House of Lords decision in Reckitt and Colman Ltd. v Borden (1990). In this case, the House of Lords described what has come to be known as the classic trinity. The classic trinity sets out the three essential eleme nts that the claimant relying on the tort of passing off must prove. First the claimant must demonstrate that the claimants services or goods have established a reputation or goodwill that separates those goods or services from comparable goods or services. Secondly, there must be evidence that the defendant misrepresented his/her goods or services with the result that it creates confusion in that the goods or services offered by the defendant are mistaken for those of the claimant. Finally, there must be evidence that the claimant is likely to incur damages as a result of the misrepresentation.5 It therefore follows that that definition and the essential elements of passing off was trimmed down by the House of Lords in the Reckitt case to encapsulate three factors. What can be gleaned from the definition and essential elements of passing off is that it aimed at protecting the reputation attached to a trade mark rather than the mark itself. This aspect of the tort of passing off is demonstrative of its significance since the introduction of the trade mark registration system. Essentially, registration protects the mark whereas a parallel right of action exists in protection of the reputation and goodwill attached to the trademark. Therefore an unregistered trademark remains