passing off

The tort of passing off is concerned with the protection of business names, trademarks and names of product. A person who attempts to cause confusion by use of a similar business name or trademark is liable under the tort of passing off.

The common forms of passing off are the following:

• a. Trading with a name similar to that of the plaintiff. Hendricks v. Montague (1881) 50 LJ, Niger Chemist v. Nigeria Chemist (1961) All NLR 180.
• b. Marketing a product with a name similar to that of the plaintiff. Hines v. Winnick (1947) Ch.D 707.
• c. Marketing a product with the trademark or imitation of the trademark of the plaintiff.
• d. Imitating the appearance of the plaintiff’s product. De facto Works Ltd. v. Odumodun Trading Co. Ltd. (1959) LLR 33.
• e. Marketing a product as that of the plaintiff. Byron v. Johnston (1816) 35 ER 851.

The remedies for the tort of passing off include the following:

• a. Damages.
• b. Account for profit or loss of sales.
• c. Injunction.

In a claim for passing off, the defendant may plead that the passing off complained of is:

• a. Consent: The defendant may plead that he has the consent or license of the plaintiff to market or make the product. Lee v. Haley (1869) 5 Ch. App. 155.
• b. The mere descriptive name of the product: Where the name used by the defendant is purely a general or descriptive name of a product, an action for passing off will not lie against the defendant. Examples of descriptive names of products are car, door, air conditioner, generator, bread etc. British Vacuum Cleaner Co. v. New Vacuum Cleaner (1907) 2 Ch 312.
• c. Functional design or package.
• d. Innocent passing off: A defendant will still be held liable where he pleads innocent passing off. However, the plea has the effect of mitigating the amount of damages that may be awarded.