Conceptually passing off is a tort which means it is a judge made rule of law. Over the course of time, the tort of passing off has evolved to take into account changing commercial realities and is concerned with the protection of the community from the consequential damage of unfair competition or unfair trading. It also protects the interest of traders in their names and reputation.
Canadian Courts require that three elements must be shown in order for a plaintiff to succeed in an action for passing off. First, the plaintiff must establish the existence of goodwill or reputation attached to goods or services supplied, in the mind of the purchasing public by association with identifying “get-up” under which the particular goods or services are offered to the public, so that the get-up is recognized by the public as distinctive of the plaintiff’s goods or services. The “get-up” may include a common law trade mark or a trade description or individual features of labeling or packaging in which the goods are offered to the public. It is the external appearance of the goods in the form in which they are likely to be seen prior to purchase. This type of goodwill is territorial in nature.
Second, the plaintiff must show a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods and services of the plaintiff. The final consumer of a product must be taken into account in determining whether passing-off has occurred.
Finally, the plaintiff must show that it has suffered or that it will likely suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.
An action for passing off is different than an action for infringement of a registered trade mark.
An excerpt from John McKeown’s February Mailer where he discusses passing off.