Jurisdiction(s):
United Kingdom

Key definition

Passing off definition

What does Passing off mean? Passing off is the common law tort used in practice to stop one business misrepresenting its goods or services as those of, or connected with, another. It protects unregistered trade marks and wider brand indicia such as names, logos, get‑up/trade dress, packaging, slogans and domain names. The action is defined by case law, not statute. To succeed, a claimant must prove: (1) goodwill or reputation in the relevant UK or Irish market; (2) a misrepresentation by the defendant to the public leading, or likely to lead, the public to believe the defendant’s goods or services are the claimant’s;...

Surveys and consumer evidence in UK trade mark and passing off (High Court and IPO): Whitford Guidelines, Interflora real value, permissions, experts, and unsolicited confusion

Published by a LexisNexis IP expert

Practice notes

This Practice Note sets out the principal legal and practical considerations involved in deploying survey evidence and witness evidence in UK trade mark and Passing off matters, in both the High Court and the UK Intellectual property Office (IPO). It provides targeted guidance on:

factors to weigh when deciding whether a survey ought to be undertaken
selecting the survey type most suited to the circumstances
fundamental Requirements to satisfy when running a survey
points to address when drafting survey questions and designing methodology
using surveys as exercises to collect witnesses and the effect of the Jackson reforms
what must be disclosed to the opposing party
formalities for expert reports supporting surveys and the expert’s role
obtaining permission to carry out a survey
use of unsolicited consumer evidence

When is a survey appropriate?

Surveys are a contentious feature of IP Disputes and may prove costly and of limited assistance, so a party should thoughtfully assess the likely value of any survey and how it will be deployed before the court...

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Melanie Worsdall

CMS Cameron McKenna Nabarro Olswang LLP

Melanie has over 10 years’ IP experience. She specialises in brand protection and advises clients on both contentious and non-contentious matters. Her practice covers a wide range of work, including clearance of brand names, management of international filing programmes and protection of trade mark rights, dealing with day to day management of international trade mark portfolios, policing major brands, bringing and defending opposition, invalidation and cancellation proceedings, dealing with domain names disputes and general IP infringement issues. Melanie also advises on the commercialisation of intellectual property, co-branding arrangements and the IP aspects of corporate and real estate transactions. Melanie works with clients from a range of sectors, including technology, fashion and real estate....

Sarah Wright

CMS

Sarah Wright became a partner in 2008 and is Head of Trade Marks. She has over 15 years' experience in advising clients on protecting, monetising and enforcing their brands and designs. Ms Wright advises clients across the technology, healthcare, media and retail sectors and specialises in all kinds of trademark work. Her caseload varies from managing international portfolios (including dealing with opposition and revocation actions) though to drafting licensing and co-existence arrangements and conducting litigation in the English courts and at the EUTM Registry. Her focus is on providing strategic advice which delivers the client's commercial objectives. Legal 500 describes her as 'efficient and practical' in her approach. Ms Wright was ranked in The Lawyer's Hot 100 2016....

Web page updated on 21/05/2026

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