For many longstanding businesses, they have built value in their brand through delivering a good service and gaining a solid reputation. This is the goodwill in the business that attracts its customers. There is real value to goodwill and it is acquired overtime. Brand identity is one of the most valuable assets a business can own.
There is a risk to all businesses that their goodwill can be wrongly exploited by others who seek to benefit from their reputation and success. An infringer can create or market their own goods and services that contain similarities to an existing brand or product, which denotes an association to that brand or product. This is known as passing off.
What is Passing Off?
Passing off protects the goodwill associated with a business against misrepresentation that causes damage. The test, set out in Reckitt & Colman v Borden (1990), often referred to as the “Jif Lemon” case, requires three key elements:
- Goodwill – a reputation among the public that distinguishes the claimant’s goods or services.
- Misrepresentation – a false suggestion that the defendant’s goods or services are those of the claimant.
- Damage – actual or potential harm to the claimant’s goodwill or reputation.
Passing off applies even where no registered trade mark exists. It can also succeed in circumstances where trade mark infringement claims fail — particularly when the dispute concerns get-up, colour schemes, packaging, or the overall “look and feel” of a product rather than a name alone.
The law of passing off is a distinct area of law based on common law, separate from trade mark infringement.
Notable Examples – “Copycat” Branding
Retailers often use similar colours, fonts, and product names to benefit from a competitor’s established reputation. The aim is rarely outright deception but to create an association strong enough to influence consumer choice. This strategy blurs the line between inspiration and imitation.
Passing off actions serve as an important control on this behaviour. They ensure that businesses cannot ride on the coattails of another’s investment or reputation. For small businesses and brand owners without registered trade marks, passing off is often the first line of defence.
Let’s consider some more clear cut (although not in any way straightforward) examples of passing off in practice. When considering passing off, the example that comes to most people’s minds is so called “copycat” branding. We have all seen supermarket’s own brands that are strikingly similar to existing branded products. How do they get away with it?
United Biscuits v Asda (1997)
Perhaps one of the best-known examples. The makers of Penguin chocolate biscuits sued Asda for selling “Puffin” biscuits in strikingly similar packaging. The court found that consumers could be misled by the visual similarities and upheld a claim for passing off — even though the trade mark claim failed.
M&S v Aldi – The Caterpillar Case (2021)
Marks & Spencer’s “Colin the Caterpillar” is a household name. When Aldi introduced “Cuthbert the Caterpillar,” M&S claimed passing off. While the case settled confidentially, it reignited public debate about supermarket “copycat” branding and the limits of imitation in retail marketing. In fact, there has been rumour over whether this case was more about marketing, because the litigation played out across social media with comical effect. Whether it was Team Cuthbert (Aldi), Team Colin (M&S), or Team Curly (Tesco), every supermarket gained marketing exposure and limelight from the ordeal. It would be interesting to see what happened to caterpillar cake sales during this time.
Board Room birthday’s at Ai Law tend to invite Colin or Curly (as M&S and Tesco are near to the head office).
Moroccanoil v Aldi (2014)
Aldi again faced a claim, this time for its “Miracle Oil,” which resembled Moroccanoil’s distinct turquoise-and-orange packaging. The High Court accepted that the similarities could mislead consumers, reinforcing that get-up and presentation can carry as much weight as the name itself.
Specsavers v Asda (2012)
Asda used a green oval logo and the slogan “Be a real spec saver.” The court held that Asda’s advertising created a link with Specsavers, even if consumers were not fully confused. The decision underscored the value of consistent visual branding and reputation.
Harrods v Harrodian School (1996)
Although Harrods failed to prove misrepresentation, the case showed that reputation alone does not guarantee success. The court stressed that confusion must be probable, not merely possible, highlighting the balance between fair competition and unfair advantage.
Why Registration of Marks Matters
While passing off provides protection, decisions often turn on the evidence and it can be costly to prove. The claimant must show goodwill and confusion — tasks that often require surveys, sales data, and witness statements. In contrast, trade mark registration gives a clear statutory right that is easier and cheaper to enforce.
Ai Law advises many clients to combine both approaches: secure registered protection where possible and use passing off principles to address imitation that falls outside trade mark scope.
How Ai Law Can Help
Our solicitors act for brand owners, retailers, and creative professionals who need to protect or defend their reputation. We assist clients in:
- Assessing brand strength and registrability.
- Registering UK and international trade marks.
- Enforcing rights through pre-action correspondence, negotiation, or litigation.
- Responding to allegations of passing off or infringement.
- Managing reputational risk in marketing and product design.
If your brand is being copied, exploited or if you are concerned that your marketing might cross the line, Ai Law can help you understand your position and act to protect your reputation.