Below is an excerpt from John McKeown’s August Mailer where he discusses some additional defences to an action for passing off on the defence side.
A number of defences relate to the nature of the defendant’s activities.
Use of a Registered Trade mark
If the alleged passing off relates to the defendant’s use of a registered trade mark in association with the wares or services of the registration, the existence of the registration will be a defence to a claim for passing off. This is because the defendant has the exclusive statutory right to use the mark in association with the wares or services for which it is registered. If the plaintiff has a claim that it is entitled to the mark in priority to the registrant consideration should be given to bringing proceedings to expunge the registration.
Use of an Individual’s Own Name
An individual defendant has a right to use his or her own name and the fact that confusion may occur does not constitute passing off by itself. However, if confusion occurs, which is brought to the attention of that defendant, the defendant is under an obligation to take reasonable care to qualify the representation implied in his or her conduct in order to avoid confusion.
Plaintiff’s Own Goods
It is not passing off to use the plaintiff’s name or mark in connection with wares that are the plaintiff’s original wares. But a trader cannot represent that wares, which are the plaintiff’s wares, are of a particular class or quality if they are not. For example, it is actionable to offer wares of inferior or deteriorated quality as the plaintiff’s original goods or the plaintiff’s wares in an materially altered form as the original. The fact that notice of the difference is given to consumers at the time of sale may avoid a finding of passing off.
Functionality
Like trade marks any combination of elements which are primarily designed to perform a function cannot be protected through a claim for passing off. The fact that the party seeking protection obtained a patent relating to the article in question is evidence of functionality. For example, the manufacturer of LEGO brand toy building blocks, after the patents relating to its product expired, was not able to protect the elements that make up its product through an action for passing off.