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Passing Off a Trade-mark

This is the second article in the trade-mark series. Check out the first article in the series: What's a Trade-mark?

"Passing off" is considered a "tort" in intellectual property and in litigation. It helps protect the proprietary right in a trade-mark. Passing off is both a common law action and a statutory action, which means it protects both unregistered and registered trademarks. A registered trademark has access to both the common law and the statutory right of action, but an unregistered trademark only has access to common law protections.

The common law right of passing off is codified in section 7 of the Trade-marks Act. A reproduction of section 7 is below:

7 No person shall

  • (a) make a false or misleading statement tending to discredit the business, goods or services of a competitor;

  • (b) direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services or business and the goods, services or business of another;

  • (c) pass off other goods or services as and for those ordered or requested; or

  • (d) make use, in association with goods or services, of any description that is false in a material respect and likely to mislead the public as to

  • (i) the character, quality, quantity or composition,

  • (ii) the geographical origin, or

  • (iii) the mode of the manufacture, production or performance of the goods or services.

7(b) refers to the "classic" conception of passing off. Passing off occurs when a person directs public attention to his goods in such as way as to cause confusion between his goods and another goods. For example, I cannot start a business selling shoes with a logo that bears a striking similarity to the Nike Swoosh because it would certainly lead a consumer to think that my shoes were manufactured by Nike.