This section looks at how you can prevent someone from making unfair use either of your reputation or of your confidential information. The former is concerned with 'passing off' and the latter involves a consideration of how the law deals with issues of confidentiality and how you can take additional steps to protect yourself.
'Passing off' is where a third party uses the goodwill associated with your goods or services without authorisation which causes, or is likely to cause, the public to become confused between your goods and services and third party goods and services, resulting in, or potentially resulting in, loss to you. For example, usually, passing off cases would involve the scenario of the infringer 'copying' the 'get-up' of your goods/services by copying your packaging and overall presentation as seen by the consumer. This could cause the consumer to purchase the 'infringer's' goods/services unintentionally, when they actually believe they are purchasing your goods/services, resulting in a loss of sales to you. Passing off is often used as an additional/alternative court action to registered trade mark infringement claims and may succeed even if the registered trade mark claim does not.
Passing off is based on the idea that no one has the right to represent his goods/services as the goods/services of another. Passing off must be in relation to third party use of your goodwill in a commercial activity.
If you wanted to raise an action of passing off, the three elements that you must prove are 1) that you own goodwill or reputation in the mark 2) that the infringer's activities are likely to, or are causing, misrepresentation leading to confusion on the part of the public (i.e. that the goods/services are associated with yours) 3) that damage has been, or is likely to be caused, for example, a loss of profits.
Defences to passing off include:
If you can prove passing off, remedies include:
The broad principle under the law is that a person who has received information in confidence cannot take unfair advantage of it. That person must not make use of it to the detriment or disadvantage of the person who gave it without obtaining his consent.
For a breach of confidence claim to succeed, three criteria must be met:
1. The information must have the requisite quality of secrecy or confidence. For the information to be considered confidential, it must appear to have a confidential quality to it. A good indicator of whether information is confidential is whether it is labelled as such on the outside of a folder or if it contains a confidential watermark running through it. The consequences of the information being released into the public domain may also be relevant to the decision as to whether the information has the necessary confidential quality. For example, in areas such as patents or the registering of designs, certain information becoming public knowledge prior to the patent or design being registered would have huge consequences for the application. In a case such as this, the information would be treated clearly as confidential due to the nature of the outcome of that information being released into the public domain.
2. The information must have been disclosed in circumstances importing an obligation of confidence. When secret information is dealt with in a commercial setting it is usually the case that an obligation of confidence is created by an express contractual provision. These are called non-disclosure agreements and are a standard business practice across many different fields. If the obligation of confidence is not expressly provided then, in certain cases, there will be an implied duty of confidence. An example of where this would arise is in an employment setting, as employees are considered to owe an implied duty of confidence concerning trade secrets and such like to their employers.
3. There must be an unauthorised use of that information to the detriment of the party communicating it.
Whether information in a particular case is confidential, depends on all the circumstances. An express agreement (i.e. a non-disclosure agreement) about what is confidential information and what use may and may not be made of that information will avoid disputes arising.
In addition, a non-disclosure agreement will:
In commercial negotiations, non-disclosure agreements can be vital.
The following types of information may need to be kept confidential: