- Passing off is a common-law tort, not a statute and not a government registration, that protects the goodwill a business has built up in a name, logo, packaging, or other identifying…
- Courts generally look at three core elements in a passing off claim: 1.
Plenty of Ontario businesses build real recognition around a name or logo for years before ever registering it as a trademark, or don't get around to registering it at all. If a competitor starts trading on that reputation, the business isn't necessarily without a remedy. Canadian law has long recognized a common-law claim, known as passing off, that can protect a brand even without a registered trademark.
This article explains what passing off is, what you generally need to prove, and why it's still worth considering registration even though this protection exists.
What Is Passing Off?
Passing off is a common-law tort, not a statute and not a government registration, that protects the goodwill a business has built up in a name, logo, packaging, or other identifying feature, against a competitor who misrepresents its own goods or services as connected to that business. It exists independently of the Trademarks Act and doesn't require any registration to bring a claim.
The classic example is a competitor adopting a name, look, or packaging close enough to an established business that customers are misled into thinking they're buying from, or dealing with, the original business.
The Three Things You Generally Need to Prove
Courts generally look at three core elements in a passing off claim:
- Goodwill or reputation. You need to show your business has actually built up recognizable goodwill in the name, mark, or get-up in question, in the relevant geographic area and market, not just that you started using it.
- Misrepresentation. You need to show the other party's conduct amounts to a misrepresentation likely to lead the public to believe their goods or services are connected to yours, whether or not that was their intent.
- Damage. You need to show actual or likely damage to your goodwill as a result — lost sales, reputational harm, or dilution of the distinctiveness you've built.
All three elements generally need to be established — this is a real evidentiary burden, not an automatic protection that arises just because you were first.
Passing Off vs. Trademark Infringement — What's the Difference?
| Passing Off | Trademark Infringement | |
|---|---|---|
| Legal basis | Common-law tort | Trademarks Act (statutory) |
| Registration required? | No | Yes |
| What you must prove | Goodwill, misrepresentation, and damage | Confusing use of a registered mark for related goods or services |
| Geographic scope | Generally limited to where you've built actual reputation | Nationwide, once registered |
| Evidentiary burden | Often higher — you're proving your reputation from scratch | Registration itself is strong evidence of your rights |
Why Registering Is Still Worth Considering
Passing off is a genuine and useful remedy, but it comes with real limitations compared to a registered trademark:
- It only protects the geographic area where you've actually built recognizable goodwill — a name well known in one Ontario city might have no protectable reputation elsewhere, even within the same province.
- Proving goodwill, misrepresentation, and damage takes real evidence — customer records, sales history, advertising materials — which is often more work and expense than pointing to a registration certificate.
- A registered trademark is nationwide and generally easier to enforce, precisely because the registration itself establishes your rights rather than requiring you to prove reputation from the ground up each time.
None of this means passing off isn't valuable — it's an important backstop, particularly for a business that hasn't registered yet or operates in a specific local market. But it's generally a harder, more expensive claim to bring than trademark infringement.
Steps to Strengthen Your Unregistered Brand Protection
- [ ] Keep clear records of when and where you started using your name, logo, or packaging — dated marketing materials, invoices, and advertising all help establish goodwill later if you ever need to prove it.
- [ ] Track your actual market and geographic reach honestly — this defines the boundaries of what passing off can protect.
- [ ] Address obvious copycats early, rather than letting confusion build in the marketplace for years before acting.
- [ ] Seriously consider registering the mark once the business has meaningful, ongoing use of it — the earlier you register, the stronger and broader your protection becomes.
- [ ] Get legal advice before sending a demand letter or filing a claim — the elements of passing off are genuinely fact-specific, and a weak claim sent aggressively can backfire.
Frequently asked questions
Do I need a lawyer to bring a passing off claim?
You're not legally required to have one, but passing off claims involve proving genuinely fact-specific elements — goodwill, misrepresentation, and damage — that are difficult to establish without legal guidance on evidence and strategy.
Can a numbered company or a name I never registered still have brand protection?
Yes — passing off doesn't depend on having registered a trade name or trademark. It depends on whether you've actually built recognizable goodwill in how you present your business to customers, regardless of what's on file with any registry.
Is passing off the same thing as trademark infringement?
No. Passing off is a common-law claim available whether or not you have a registered trademark, focused on protecting your actual reputation. Trademark infringement is a statutory claim under the Trademarks Act that depends on having a registered mark, with its own separate test.
What if I've been using a name for years but never registered it — is it too late?
It isn't too late to register, and doing so is often worth pursuing precisely because of passing off's limitations. Long, consistent use can actually support a stronger registration application and stronger unregistered rights in the meantime, but the specifics depend on your situation, so get advice on timing and strategy.
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