What is passing off under Hong Kong law?

Passing Off Law Hong Kong Business Protection

Passing off is a common law tort protecting unregistered trade marks and business reputation in Hong Kong. A plaintiff must prove three elements: goodwill, misrepresentation, and damage. This tort operates alongside statutory trade mark law administered by the Intellectual Property Department, but it is a separate court action.

Goodwill Protection Hong Kong

Goodwill is the reputation attached to a business, its name, or its get-up. To succeed in a passing off claim, the plaintiff must own goodwill in Hong Kong. This is distinct from owning a registered trade mark. Goodwill is built through actual trading activity and customer recognition within the jurisdiction. A business that has never traded in Hong Kong cannot claim local goodwill, even with a strong reputation elsewhere.

Misrepresentation Hong Kong Law

The second element is misrepresentation. The defendant must make a representation to the public that leads, or is likely to lead, to consumer confusion about the source of goods or services. The misrepresentation need not be intentional. It is enough that the defendant's conduct creates a false impression of a connection with the plaintiff's business. This is the core distinction from trade mark infringement, which concerns registered marks rather than deceptive conduct.

Passing Off Claim Hong Kong

A passing off claim is a court action brought in the Hong Kong courts. Remedies include an injunction to stop the offending conduct, damages or an account of profits, and orders for the delivery up of infringing materials. The claimant bears the burden of proving all three elements on the balance of probabilities. Because passing off protects unregistered trade marks, the claim is more complex and costly than statutory infringement. The plaintiff must prove its reputation rather than rely on a registration certificate.

Common Law Trade Mark Hong Kong

Unregistered trade marks are protected under the common law through the tort of passing off. This protection is limited to the geographical area where the goodwill exists and is harder to enforce than a registered mark. Businesses relying on unregistered marks should document evidence of trading, advertising, and customer recognition. The common law remedy does not replace registration with the Intellectual Property Department, which provides a statutory presumption of validity and nationwide protection.