Understanding Passing Off in relation to Trade Marks: A Guide for Australian Business Owners

tort of passing off

In the fast-paced world of business, brand recognition is the key to success and establishing a strong brand identity and protecting it from infringement is essential for long-term growth.

One crucial aspect of safeguarding your brand is understanding the tort of passing off with respect to trade marks. In this post, we will demystify this concept, explore its relevance to Australian business owners, all while illustrating how important it is for you and your business.

What is Passing Off?

Passing off refers to a legal principle that protects businesses from unfair competition. It occurs when one party misrepresents its goods or services as those of another party, leading to confusion among consumers.

In simpler terms, passing off takes place when someone tries to ride on the coattails of an established brand, potentially causing harm to its reputation or commercial interests.

Applicability in Australia

In Australia, passing off is primarily governed by the common law, which means it is based on Court precedent (i.e. previous decisions) rather than specific legislation.

While trade mark registration provides strong legal protection, passing off can offer additional safeguards against the unauthorised use of your brand. It is particularly relevant for unregistered trade marks or situations where registered trade marks are not directly infringed.

The Elements of Passing Off

To establish a passing off claim, three key elements must be present:

1.    Reputation

The business claiming passing off must demonstrate that it has acquired a significant reputation or goodwill associated with its brand in the relevant market.

2.    Misrepresentation

The alleged infringer must have made a false representation that confuses or deceives consumers into believing that their goods or services are connected to the reputable business.

3.    Damage

The business claiming passing off must prove that it has suffered or is likely to suffer damage as a result of the misrepresentation.

Let’s consider two scenarios to illustrate passing off…

“Java Delights”

Imagine a small local café named “Java Delights” that has built a loyal customer base over the years.

A new café called “Javaholic” opens nearby, using a similar logo, menu design, and branding elements. Customers, assuming it is associated with Java Delights, flock to Javaholic instead.

In this case, Java Delights could potentially have a passing off claim against Javaholic.

“Fusion Fashion”

A well-known clothing brand, “Fusion Fashion,” releases a new line of designer handbags.

A competitor, “Fashion Fusion,” starts selling counterfeit versions of these handbags, deliberately imitating Fusion Fashion’s branding and logo.

Consumers unknowingly purchase these counterfeit products, thinking they are genuine Fusion Fashion items.

Here, Fusion Fashion may have grounds for a passing off claim against Fashion Fusion.


As a business owner in Australia, understanding passing off in relation to trade marks is vital for protecting your brand and reputation.

While registered trademarks offer robust legal protection, passing off provides an additional layer of defence, particularly for unregistered trademarks. By establishing reputation, proving misrepresentation, and demonstrating damage, you can safeguard your brand from unfair competition.

Remember, the key to success is building a strong brand identity and taking proactive steps to protect it. Stay vigilant, monitor the market, and take appropriate legal action when necessary. By doing so, you can ensure the longevity and success of your business in the competitive Australian market.

Take charge of your brand, embrace the power of passing off protection, and secure your business’s future.