Passing Off Claims: Evidence Requirements and Bundle Preparation

Last updated: March 2026

Quick Answer

A passing off claim requires evidence of three elements — the "classic trinity" established in Reckitt & Colman v Borden [1990] UKHL 12: goodwill attached to your goods or services, a misrepresentation by the defendant leading (or likely to lead) the public to believe their goods or services are yours, and actual or likely damage to your goodwill as a result. Your court bundle must systematically address all three elements with documentary evidence, not mere assertion. Passing off claims are typically brought in the IPEC or the Chancery Division of the High Court.

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What Is Passing Off?

Passing off is a common law tort that protects the goodwill of a business against misrepresentation. Unlike trade mark infringement — which requires a registered trade mark — passing off protects unregistered rights. It is the legal remedy for a business whose reputation and customer base are being damaged by someone else trading in a way that creates confusion.

The tort has deep roots in English law. Lord Diplock's formulation in Erven Warnink v Townend [1979] AC 731 (the "Advocaat" case) identified five elements, but the modern test was distilled into three by Lord Oliver in Reckitt & Colman v Borden [1990] — commonly known as the "Jif Lemon" case. These three elements — goodwill, misrepresentation, and damage — form the structure around which your entire bundle should be organised.

If you cannot prove any one of the three, your claim fails. There are no shortcuts.

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Element 1: Goodwill

What Goodwill Means

Goodwill, in the context of passing off, is not an abstract concept. It is the attractive force that brings customers to your business. Lord Macnaghten defined it in IRC v Muller & Co's Margarine [1901] AC 217 as "the benefit and advantage of the good name, reputation, and connection of a business."

Critically, goodwill must be connected to actual trading activity within England and Wales. A foreign brand that is well known but has never traded in the UK may have reputation but not goodwill — and reputation alone is not enough for a passing off claim (see Starbucks (HK) v British Sky Broadcasting Group [2015] UKSC 31).

Proving Goodwill: What to Include in Your Bundle

Sales and Financial Evidence:

• Annual revenue figures, ideally broken down by year and product or service line
• Number of customers or transactions
• Volume of goods sold or services delivered
• Growth trajectory — showing increasing sales over time strengthens the claim

Marketing and Advertising:

• Annual marketing spend, with a breakdown by channel (print, online, social media, broadcast)
• Examples of advertisements, promotional materials, and packaging
• Social media metrics — follower counts, engagement rates, reach statistics
• Email marketing data — subscriber numbers, open rates
• Sponsorship or endorsement agreements

Brand Recognition:

• Press coverage and media mentions — articles, reviews, interviews
• Industry awards or recognitions
• Testimonials or reviews from customers (particularly dated ones showing long-standing recognition)
• Professional directory listings
• Mentions in trade publications

Duration and Geographic Extent:

• How long you have traded under the name or with the get-up in question
• Where you have traded — a business with goodwill across the entire UK has a stronger claim than one limited to a single town
• Export evidence — if your goods are sold internationally, include UK-specific data

The Get-Up:

• If your claim relates to product appearance, packaging, or livery rather than a name, include clear photographs showing the distinctive elements of your get-up
• Evidence that the get-up has become associated with your business in the mind of the public — not just that it looks distinctive

Common Mistakes with Goodwill Evidence

The most frequent error is asserting goodwill without proving it. A witness statement saying "our business has significant goodwill" is worthless without supporting documentation. Judges want to see numbers, dates, and documents — not adjectives.

Another common mistake is confusing reputation with goodwill. If you have been featured in a newspaper but have never actually sold anything in the UK, you may have reputation without goodwill. The two are legally distinct, and only goodwill supports a passing off claim.

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Element 2: Misrepresentation

What Constitutes Misrepresentation

The defendant must have made a misrepresentation — in the course of trade — that leads or is likely to lead a substantial number of members of the public to believe that the defendant's goods or services are those of the claimant, or are connected with or endorsed by the claimant.

The misrepresentation need not be intentional. Innocent misrepresentation is sufficient for passing off — though fraudulent intent, if proved, strengthens the claim and may affect the remedy.

Types of Misrepresentation

Proving Misrepresentation: What to Include in Your Bundle

Side-by-Side Comparison:

• Your name, logo, or get-up alongside the defendant's — presented clearly on the same page
• Annotated comparison highlighting the similarities
• Evidence of the defendant's awareness of your brand (for example, they operated in the same geographic area or industry)

Evidence of Actual Confusion:

• Emails, letters, or messages from customers who confused the two businesses
• Misdirected enquiries, orders, or payments
• Social media posts where consumers tagged the wrong business
• Reviews on the defendant's listing that clearly describe your products or services
• Wrong delivery complaints — goods arriving from the defendant when the customer intended to order from you

Evidence of Likely Confusion:

• Expert evidence on the likelihood of confusion in the relevant market
• Survey evidence (conducted in accordance with the Whitford Guidelines and the principles in Interflora v Marks and Spencer)
• Evidence of the overlap between your customer base and the defendant's target market
• Evidence that the goods or services are in the same field or a closely related one

A Note on Survey Evidence

Survey evidence can be powerful in passing off claims, but it is a double-edged sword. Poorly designed surveys are regularly excluded by the courts, and even well-designed ones attract scepticism. The Whitford Guidelines (from Imperial Group v Philip Morris [1984]) set out requirements for survey methodology, and subsequent cases have refined these.

If you plan to rely on survey evidence, consider including in your bundle:

• The full survey methodology
• The questions asked (which must not be leading)
• The raw data and results
• A report from the market researcher who conducted the survey
• Evidence that interviewees were drawn from the relevant public

Be aware that survey evidence is expensive to produce and may not be permitted on the IPEC small claims track. Weigh the cost against the likely benefit before commissioning one.

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Element 3: Damage

What Damage Must Be Shown

The claimant must show that the misrepresentation has caused, or is likely to cause, damage to their goodwill. This is not the same as proving financial loss in a precise amount — it is sufficient to show that damage is a reasonably foreseeable consequence of the misrepresentation.

Types of Damage

Diversion of trade — customers who would have bought from you instead bought from the defendant, believing the defendant's goods or services to be yours.

Erosion of distinctiveness — the public ceases to associate your name or get-up exclusively with your business, reducing its commercial value.

Damage to reputation — if the defendant's goods are of inferior quality, consumers who experience them believing they are yours may form a negative impression of your brand.

Loss of licensing opportunity — if you would otherwise have licensed the use of your name or get-up, the defendant's unauthorised use deprives you of licensing income.

Proving Damage: What to Include in Your Bundle

• Financial evidence — lost sales, reduced revenue, or declining market share since the defendant's entry into the market
• Customer migration evidence — data showing customers switching from your business to the defendant's
• Pricing impact — evidence that you have been forced to reduce prices to compete
• Reputation evidence — negative reviews or complaints that relate to the defendant's products but are directed at you
• Market analysis — reports showing your market share before and after the misrepresentation
• Future damage projections — if the infringement is recent, evidence of likely future damage (for example, the defendant's expansion plans or marketing investment)

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Structuring Your Passing Off Bundle

Recommended Bundle Structure

Tab 1: Court Documents Claim form, Defence, Reply, case management orders, relevant correspondence with the court.

Tab 2: Goodwill Evidence All documents proving the existence, nature, and extent of your goodwill — organised chronologically within thematic sub-sections (financial, marketing, press, duration).

Tab 3: The Misrepresentation Side-by-side comparisons, the defendant's trading materials, evidence of actual or likely confusion, survey evidence.

Tab 4: Damage Financial records, customer data, market analysis, reputation evidence.

Tab 5: Correspondence Pre-action correspondence, cease and desist letters, the defendant's responses, any admissions.

Tab 6: Witness Statements Your own statement, customer witness statements, expert reports.

Tab 7: Authorities Key case law and statutory provisions you intend to rely on (only if the court's directions require a bundle of authorities).

Formatting Requirements

Your bundle must be presented as a single, paginated PDF with:

• A hyperlinked index at the front
• Bookmarks for each section and sub-section
• Continuous page numbering
• OCR text recognition for searchability
• No security restrictions

BundleCreator.co automates these formatting requirements, generating compliant bundles with pagination, indexing, and bookmarking. For passing off claims — where the volume of goodwill evidence can be substantial — having a well-structured, navigable bundle helps the judge locate the critical documents efficiently.

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Passing Off vs Trade Mark Infringement: Choosing Your Claim

If you hold a registered trade mark, you have the option of bringing a trade mark infringement claim under the Trade Marks Act 1994 — which is generally easier to prove — alongside or instead of a passing off claim. Many claimants plead both in the alternative.

If you have both registered and unregistered rights, include evidence supporting both claims in your bundle. Even if the trade mark claim is your primary route, the passing off claim provides a fallback if the registration is challenged.

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Frequently Asked Questions

Can I bring a passing off claim without a solicitor?

Yes, particularly in the IPEC small claims track (for claims up to £10,000) or the IPEC multi-track (up to £500,000 with a costs cap). Passing off is factually intensive, so thorough preparation of your evidence bundle is essential. Self-represented claimants who present clear, well-organised bundles can and do succeed.

How do I prove goodwill if my business is relatively new?

You do not need decades of trading history to establish goodwill. Businesses can build goodwill quickly — particularly online. Focus on concrete evidence of actual trading: customer numbers, revenue, advertising spend, press coverage, and social media following. A business that has traded for six months but can demonstrate significant sales and brand recognition may have sufficient goodwill.

Is it enough to show that the names or logos are similar?

No. Similarity is necessary but not sufficient. You must also show that the similarity amounts to a misrepresentation (that the public is actually confused or likely to be confused) and that this misrepresentation causes or is likely to cause damage to your goodwill. A passing off claim is not a design comparison exercise — it is about protecting the commercial relationship between your brand and your customers.

What if the defendant registered a company name at Companies House?

Company name registration at Companies House does not confer any trade mark or passing off rights. The fact that the defendant's company name is registered does not prevent you from bringing a passing off claim, and it does not provide the defendant with a defence. Separately, you may also have a claim under section 69 of the Companies Act 2006 if the defendant's company name is opportunistic.

Can I get an interim injunction?

Yes, on the standard American Cyanamid principles: a serious question to be tried, damages not an adequate remedy, and the balance of convenience favouring the grant. In passing off cases, interim injunctions are particularly important because ongoing misrepresentation continues to erode your goodwill every day it persists. The court will also require you to give a cross-undertaking in damages.

How much does a passing off claim cost?

Costs vary significantly depending on the court and complexity. On the IPEC small claims track, you can issue a claim for a few hundred pounds in court fees. On the IPEC multi-track, costs are capped at £50,000. In the Chancery Division, costs are uncapped and can run to six figures. The costs regime should influence your choice of forum.

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Stevie Hayes writes about intellectual property disputes, evidence preparation, and court bundles for BundleCreator.co — the UK's dedicated court bundle preparation platform for legal professionals and litigants in person.