March 16, 2012

Passing off: pre-action undertakings

This post was written by: Aston Bond Law Firm

Before commencing proceedings, you should normally send a letter before action; therefore, there is little harm in seeking undertakings within the same letter (whilst reserving all of your rights). Often, undertakings can be successfully gained, as well as agreeing appropriate damages, prior to and within the need for court action.

The undertakings sought will of course be in consideration of you refraining from bringing legal proceedings against the infringing individual/company for passing off, but if successfully obtained, these can be just as fruitful (if not more) than an outcome that could be achieved at court – and of course, without the stress and legal costs of attending court. It is not uncommon to seek the following assurances from an infringer:

  • Not to manufacture, import, offer for sale, advertise, distribute any infringing products (the Goods) with are confusingly similar and which are calculated or likely to be associated with or injure the reputation or goodwill associated with your trade mark.
  • Not to pass off as being associated or in any way connected with you or your business.
  • To deliver up all Goods and documents in the infringer’s possession which relate to the alleged passing off.
  • To provide a schedule of the sales and supplies made by the infringer of all Goods that fall within the alleged passing off, including complete details of quantities supplied, prices and the identity of all purchasers and the identity of all parties who have supplied the infringer with the Goods.

[Optional clause where passing off is of business rather than product:]

  • To provide to you details of whom the infringer has made any representation that the infringing company/individual is associated or any way connected with you or your business.
  • To provide a witness statement, confirming that the infringer has complied fully and promptly with the obligations imposed and that the information supplied above is accurate and comprehensive.
  • To pay such damages or profits relating to the passing off as may be agreed or, in default of agreement, determined by the court.

Of course, there is no guarantee that the infringer will comply and often the matter will need to be dealt with at Court. But, you can improve your prospects of successfully obtaining undertakings with a comprehensively drafted letter (which normally carries more weight if drafted by a solicitor) identifying the goodwill in your business, details of alleged passing off (enclosing copies of documentary evidence) and outline why it is likely to cause confusion in the minds of the public that the products the infringer is selling and/or the service the infringer is providing are your products/services, or are associated or connected with your business. Full reference should be made to how the two marks are similar and why the continued presence in the market of the infringer’s products being sold under their mark is likely to cause substantial damage to your reputation and goodwill. It is also helpful to set out examples of confusion that has occurred.

Aston Bond can assist you with obtaining, collating and selecting evidence to support an allegation for passing off and drafting a letter before action/request for undertakings.

Should court proceedings become necessary, we can act on your behalf to obtain various remedies, such as an injunction (pending trial), delivery up and/or destruction of all infringing copies, damages or an account of profits, legal costs and interest.

Dion McCarthy, Trainee Solicitor