12A Comparative Study of Passing off among of the UK,
Japan and China（*）
Invited Researcher: Li Yan（**）

Passing off is a tort that the goods of the defendant are falsely represented as the goods of the plaintiff,
usually, by using the plaintiff’s indications as means of misrepresentation. Passing off prevention origins
from the UK common law. However, in the statute countries such as Japan and China, there are the Unfair
Competition Prevention Act in Japan and the Anti-Unfair Competition Act in China. In the two statutes, there
are the provisions of passing off which are similar to the law of passing off in the UK. In this research, acomparative study about passing off is made among the UK, Japan and China. Principles of passing off in thethree countries have something in common and also have differences. Passing off is regarded as one act of
unfair competition in the three countries. By comparing the four aspects of the types of indications, theelements of passing off, legal liability, the relationship between passing off and trade mark law in the three
countries, the conclusions have been drawn that the law of passing off in the UK and passing off provisions of
the Unfair Competition Prevention Act in Japan are quite similar and satisfy changes of commercial
situations. However, the passing off provisions of the Anti-Unfair Competition Act in China seem underdevelopment. Suggestions have been made to narrow the gap between the UK, Japan and China.

Ⅰ Introduction
1

Definition and nature of passing off

The law of passing off origins from common
law of the United Kingdom (the UK). Passing off
action can be regarded as the oldest action for theprotection of goodwill. The basic principle of thelaw of passing off was better expressed by Lord
Halsbury in Reddaway v Banham1, “For my self, I
believe the principle of law may be very plainly
stated, and that is that nobody has any right torepresent his goods as the goods of somebody
else. How far the use of particular words, signs,
or pictures does or does not come up to the
proposition which I have enunciated in eachparticular case, must always be a question ofevidence, and the more simple the phraseology,
the more like it is to a mere description of thearticle sold, the greater becomes the difficulty of
proof, but if the proof establishes the fact thelegal consequence appears to follow. ” In short,passing off is a tort that the goods of the
defendant are falsely represented as the goods ofthe plaintiff, usually, by using the plaintiff’s
indications as means of misrepresentation.
Changes of this concept can be seen from thehistory of passing off. The action of passing off
was first recognized in the Elizabethan case of JG

v. Samford 2 . The most recent authoritative
statement of the law of passing off can be found in
Warnink v Townsend 3 , in which Lord Diplocksummed up five elements of a valid passing off
action:(i)a misrepresentation; (ii)made by a traderin the course of trade; (iii)to prospective
customers of his or ultimate consumers of goods
or services supplied by him; (iv)which is
calculated to injure the business or goodwill ofanother trader and (v)which causes actual damage
to a business or goodwill of the trader by whom
the action is brought or will probably do so. In
Reckitt & Colman v. Borden4, Lord Oliver madetheelements
into
three:
goodwill,misrepresentation and damage.
Passing off in the UK is deceit tort and theinfringer takes advantage of other trader’sgoodwill by misrepresentation that his goods canbe regarded by the consumers as the othertrader’s. The UK does not have statute of unfair
competition prevention law. Passing-off isregarded as unfair competition act under thecommon law system. Japan and China are statutecountries. There are the Unfair Competition
Prevention Act in Japan and the Anti-Unfair
Competition Law in China. In the two laws theprovisions5 of passing off are similar to the law ofpassing off in the UK. Principles of passing off in
the three countries have something in common
and also have differences.

(*)

This is a summary of the report published under the Industrial Property Research Promotion Project FY2010
entrusted by the Japan Patent Office.
(**) Associate Professor, Northwest University of Political Science and Law of China

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2

Ⅱ Indications in the law of passing
offPassing off and unfair competition(1) The meaning of unfair competition
According to Article 10bis of Paris
Convention, which and defines unfair competition
as any behavior against commercial principle ofhonesty in the industrial or commercial practice,every member country committed to prevent theacts of unfair competition.
(2) Passing off and unfair competition in
the UK, Japan and China
Unfair competition prevention has economic
value to society. Passing off prevention is one
example. Passing off prevention is the protection
for the traders whose goods and services aretrusted by consumers in order to make these
traders develop their goodwill without disturbance.
Passing off prevention is also the protection forthe public benefit, so that the public cannot bedamaged by misleading origin.
In the UK, the concept of unfair competition
is developing in the name of passing off and its
scope is equal to the area of passing off. However,the sphere of passing off is not definite, and it has
absorbed new ways to adapt new environment.
The term of Passing off is originally used in
the UK, but there are similar regulations in the
Unfair Competition Prevention Act of Japan. In
Japan, passing off is regarded as “the oldest andmost important act of unfair competition.” 6 It
requires goods or services of one trader to be
mistaken for goods or services of another.
There is one provision of passing off in theAnti-Unfair Competition Law7 in China and there
is a judicial explanation by the Supreme Court ofChina to regulate passing off in detail. Passing off
in China is also an important unfair competition
act and in practice there appear many cases aboutpassing off. However, there are some problems intheory, such as elements of passing off are notclear enough; legal liability does not follow theinternational trend; the relationship between
passing off and trademark law is vague. So, theconcept of passing off in China needs to be
perfect in order to protect against acts of unfair
competition.

1

Distinctiveness(1) The meaning of distinctiveness in thelaw of passing off
Distinctiveness is a legal term in the law ofpassing off. If it is conferred that the plaintiff’s
goods could exclude other trader’s goods, thetrademark, name or get-up on the goods can be
regarded as distinctiveness. The most important
thing is that the relevant public can relate thetrademark and goods together. If the relevantpublic cannot connect the trademark with thegoods together, it is not distinctiveness as a legal
term, no matter how original, impressive andspecial the mark is because the mark does nothave trademark function. In verse, even if themark itself is not novel, it can consist of
distinctiveness in legal meaning. The important
thing is the function of the mark rather than theoriginality of the mark.
(2) Elements of distinctivenessA trademark gets distinctiveness throughuse, but no legal principle to regulate to what
extent of use is enough to launch action ofpassing off. The key point is some portion of
relevant public makes sure the trademark is
distinctive. Generally, the plaintiff gets advantage
because he uses the trademark for a long timeand in big size. However the two elements are
not fundamental. It is common that when the
defendant’s business field has slight difference
from the plaintiff’s and the plaintiff does not use
this trademark enough, the plaintiff is likely tofail.
2Types of indications in the UK(1) Descriptive and generic names
Descriptive and generic names, words andphrases can only be protected when the plaintiff
proves they have gotten secondary meaning.
(2) Place names and personal names
Place names can become distinctive
regardless whether the names are famous or
obscure. The main issue is only the fact thatwhether the name can recognize the origin ofgoods and services. Personal names often become
distinctive and can be trade names on business ortrademarks on goods.

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(3) Initials
Cases show that initials or arbitrary
combinations of letters may be distinctive and theuse of confusingly similar letters will be
prohibited.
(4) Titles
The titles of newspapers, magazines andother periodical publications can be regarded as
trademarks. When the same or similar title isused, the liability of passing-off may arise.
(5) Get-up
Get-up means a capricious addition to thearticle itself – the color or shape or the wrapper
or anything of that kind8. The plaintiff must showthat the confusion arises from those features of
the get-up which are distinctive.
(6) Visual marks
Labels and pictures as a whole may be
distinctive. Symbols, devices and logos can also
be distinctive.
(7) Miscellanea
There are other indications which had casesof constituting passing off, such as numerals,
telephone numbers and manner of trading, wholemanner of trading and so on. In all, the sphere ofindications in the UK is quite wide and indefinite.
3

Types of indications in Japan

According to the Unfair Competition
Prevention Act, the indications in Japan should
include “a name, trade name, trademark, mark, or
container or package of goods used in relation to aperson's business, or any other indication of aperson's goods or business”. 9 This provision
includes two parts, one part is to exemplify kindsof indications such as name, trade name,trademark, mark, or container or package ofgoods. The other part has indefinite meaning thatany other indication of a person’s goods orbusiness. Such act would be passing off.
However, there are some exceptions. For
example, there will not be distinctive when thecolors can only be distinguishing feature. In acase of color10, the plaintiff had provided household
electronics and furniture for university students
for many years. Their products are all dark blue.
When the defendant used the same dark blue for
their household electronics products, the plaintiff
sued for passing off. The Osaka High Court held
this use did not constitute passing off, because

IIP Bulletin 2011 Vol.20

one color cannot be monopolized by one company.
4

Types of indications in China(1) Exclusive name, dress, ornamentation
According to Art.5(2)and (3) of theAnti-Unfair Competition Law of China, there aresome indications used in passing off actions. They
are exclusive name, dress, ornamentation ofwell-known goods, trade name, a person’s name.
Exclusive name refers to the name used
exclusively on well-known goods. But the namewhich is registered is excluded. Dress in theAnti-Unfair Competition Law can constitutecommercial indications, but the function of dress
is not protected. “Ornamentation” refers to thewords, drawings, colors or combination above allon the goods or services in order to distinguishand beautify goods”. Here, the distinguishing
meaning and function of ornamentation are also
put together. In fact, according to the Anti-Unfair
Competition Law, ornamentation should have
only one meaning of distinguishing goods.
(2) Trade name of Chinese company andforeign company
Under the Interpretation of the Supreme
People’s Court, “trade names are defined as thecompany names which are registered atadministrative authority and trade names offoreign companies which have business in
China.” 11 So, both Chinese trade names andforeign trade names are protected in China.
(3) A person’s name
When a person’s name has meaning ofdistinguishing the source of goods, it is protectedby Act. 5(3) 12 of the Anti-Unfair Competition
Law.
5

Evaluation

In the law of passing off, using the same orsimilar indications as means of passing off is mostcommon.
The
indication
shouldhave
distinctiveness first. According to the principlesof the law of passing off, the distinctivenessshould relate to goods and the distinctiveness canbe gotten only through use. The originality ofindication itself is not prerequisite conditions forgetting distinctiveness, so even descriptive words
can be distinctive when they originate the goods
or services. No matter what indication protectedby the law of passing off, the requirement ofdistinctiveness should be satisfied. The sphere of● 3 ●indications is different among the three countries.
The sphere of indications in the UK is very wide.
The sphere of indications in Japan is also wide.
Some indications are exemplified and indefinite
definition of sphere of the types of indications isdetermined in the Unfair Competition Prevention
Act of Japan. Comparatively the sphere ofindications in China is narrower than that of the
UK and Japan and some indications are notprotected in the Anti-Unfair Competition Law. In
practice, the court has to give wider explanationin order to protect some indications. So, China
should take the examples of Japan and the UK,
wider sphere of indications should be regulated in
the law and regulations of passing off in China.

Ⅲ Elements of passing off
1

Elements of passing off in the UK

The elements of passing off in the UK are
goodwill, misrepresentation and damage which
are usually called classical trinity. The advantage
of classical trinity is that the focus of passing off
is in the essential relationship between the threeelements. In a case of passing off, the threeelements are interacted. Goodwill is necessaryforjudgmentof
misrepresentation.
Misrepresentation causes or is likely to cause
damage to goodwill. Damage of goodwill is theheart of the cause of action. Goodwill itself isgenerated by trading activity, which is usually thesource of reputation. But the existence ofreputation does not automatically establish
goodwill.
2

Elements of passing off in Japan(1) The requirement of well known
The courts regard local recognition as
geographical range of recognition. But when themarkets of both the plaintiff and the defendant are
different or are not adjacent, the defendant may
continuously use the possibly confusing
indication. The recognition of whether anindication is well known or not should be among
consumers or other purchasers according to thelaw, but the courts explain the term in a broad way.
Courts in Japan cannot afford exact judgment todetermine recognition, but only exemplify
relevant circumstances, such as turnover figures,the potential number of customers, the customs
in the particular trade, the price of the goods evenamount of advertisements in newspapers, on
television, etc. Courts in Japan also can accept

survey evidence as one of evidences.
(2) The requirement of confusion
The plaintiff has to show two aspects toprove confusion. Firstly he has to show that his
indication is well known and the defendant’s
indication is the same as or similar to his
indication. Secondly, he has to show that
confusion is occurred on the goods or business of
his own with the defendant’s goods or business.
That is to mean the defendant’s behavior
misappropriates the plaintiff’s goodwill.
(3) DistinctivenessIf an indication would be protected in thepassing off action, the indication should havedistinctiveness. So, distinctiveness is one
element of passing off in Japan. In the passing off
action, according to the Unfair Competition
Prevention Act, distinctiveness can only begotten through use.
(4) Interdependence of elements
Generally, if products are so well known thatthe public can relate the products with the origin,even the products with common shape ordescriptive indication can be protected. Secondly,
making the indication or shape or package of
products distinctive is not enough for protection,
it need further marketing effort to make thepublic know its business. Distinctiveness andrecognition influence the concept of confusion.
3

Elements of passing off in China

According to Art 5(2) and (3) of theAnti-Unfair Competition Law of China, theelements of passing off are as following:(1) The well-known
According to Chinese regulations, thewell-known goods refers to the goods are known
in some area of China and familiar by the relevantpublic. The name, dress and ornamentation of
goods are only well known in China and may beprotected by Chinese law. It is well known only inthe relevant public and does not require it is
known by all public or in all markets.
In China a company name must be registeredat administrative authority, but it is usuallyconsist of the name of administrative area, tradename, the feature of business field and so on.
Among these factors, trade name has the meaningof the most distinctive one. So, the dispute ofcompany names are usually the confliction of● 4 ●IIP Bulletin 2011 Vol.20

trade names. Therefore, Art.6 (1) of theInterpretation of Unfair Competition states “thetrade name which are well-known in some way
and is known by the relevant public is regarded as
the company name regulated by Art.5 (3) of theAnti-Unfair Competition Law.”
The abbreviation of trade name which iswell-known in the market and is known by therelevant public can be regarded as trade name.

passing off required in the UK and Japan. So, theelements of passing off in China should abandon
the intention as its element and regard wellknown, distinctiveness and confusion as elementsof passing off.

(2) DistinctivenessAccording to the Anti-Unfair Competition
Law, distinctiveness refers to the distinctivenessof trademark which should be used. It includes
two meanings: one is the mark which itself has
distinctiveness is used to get identification; theother is the mark which gets secondary meaning
in the course of use.

In a passing off action in the UK, theremedies for the plaintiff would be an injunction,an account of profits or an inquiry as to damages.
When the act of the defendant makes consumers
confused about the origin of goods and services,and regard the defendant’s goods or services as
the plaintiff’s, and the plaintiff’s mark is very
distinctive of his goods, injunction will be granted.
If the plaintiff is successful in a passing off action,
it is usual to ask for the damage. It is a question
for the court to order an enquiry when thepossibility of damage of the plaintiff is very small.
In passing off action of the UK, there are no cases
to decide criminal liability and administrative
liability. So, only civil liability is applied in thepassing off action.

(3) Confusion
The judgments of confusion in China have
two aspects. From subjective aspect, consumers
feel confused about the indication of the infringer
and that of the infringed on the same goods orservice when the consumers only pay generalattention on the goods or service. From objective
aspect, the indication of the infringer and theindication of the infringed are the same or similar.
The methods of overall comparison and separate
comparison are good ways of judging thesimilarity of indications.
(4) State of mind -intention
In Art.5 (2) and (3) of the Anti-Unfair
Competition Law, the expression of “withoutauthorization” means to do something which is
not in one’s charge. Obviously, the two provisions
mean the infringer intends to use other person’s
name, dress or ornamentation of goods or tradename, so the state of mind of the infringer isintention.
4

Evaluation
The elements of passing off between the UK
and Japan is similar, though the names of
elements seem different. The requirements ofwell-known and distinctiveness can be satisfied
only if the trader gets goodwill. The requirementof confusion is a kind of misrepresentation. So,
passing off provisions in Japan are also theprotection of goodwill which is damaged bymisrepresentation. In China, the elements of thewell-known, distinctiveness and confusion are
similar to that of in Japan.
There is no intention as one element of

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Ⅳ Legal liability
12Legal liability in the UK

Legal liability in Japan

There are five types of legal liabilities
regulated in the Unfair Competition Prevention
Act. They are injunctive relief, damages,
destruction of infringing goods;restoration ofbusiness reputation; criminal enforcement.
3

Legal liability in China

The Anti-Unfair Competition Law in China
regulates civil liability for remedy of passing offdamage. Under Art.21 of the Anti-Unfair
Competition Law, the administrative liabilities forpassing off are as following: ordering thedefendant ceasing the offense, confiscating theillegal income, and imposing according tocircumstances, a fine of more than twice and lessthan three times the amount of illegal income;revoking his business license, When thecircumstances are serious. So there are at least
four kinds of administrative liabilities for passing
off. In the Anti-Unfair Competition Act. According
to Art. 21 of the Anti-Unfair Competition Law, thecriminal liability are not clearly defined, and it
stipulates “where an operator sells goods which
are counterfeit or of inferior quality, constituting acrime, his criminal liability shall be investigated● 5 ●according to law.”
4

Prevention Act is wider than the sphere of
trademark protected by trademark law.

Evaluation
3

Legal liability in the UK is made case by case.
There is only civil liability taken by the defendantin the UK and no administrative and criminal
liability are granted by the court. In the civil
liability, injunction is the most important remedy
for the plaintiff and is usually used in the court.
Though damage is also important for the plaintiff
to recover his loss, it is difficult to quantify andthe court is left at its discretion to grant to theplaintiff. Japanese law takes the civil liability as
the main means of remedy and criminal
punishment as supplementary measures, while
Chinese law takes administrative liability as main
measures and civil remedy as supplementarymeasures of remedy. Therefore, China shouldchange into civil remedy as main measure andadministrativeandcriminal
liabilityassupplementary measures.

Ⅴ Passing off and trademark law
1

Passing off and trademark law in the UK

The law of passing off is always flexible, easy
to adapt changes of commercial environment.
Firstly, the indications were adopted in the case ofpassing off, and then were absorbed by trademark
law. The Trade Marks Act 1994 absorbed many
indications which were only protected by thepassing off cases before. So, the law of passing off
can be regarded as precedent example forindication protection of trademark law. The
plaintiff can bring passing off action as same asbring trademark infringement action when the
trademark is registered by the plaintiff.

Though from the provision of Art.5 of theAnti-Unfair Competition
Law
relationshipbetween passing off and trademark law can beseen, but the relationship is not clear enough. Art.
5 (1)of the Anti-Unfair Competition Law shows
passing off registered trademark is one kind of
passing off .In other words, registered trademark
mark can be regulated by trademark law at thesame time by the Anti-Unfair Competition Law.
Passing off registered trademark can be equal totrademark infringement of Trademark Law. So,
the standard for passing off registered trademark
should be the same to trademark infringement.
But, in reality, they are quite different. As to
trademark infringement, confusion is not
regulated as one element of infringement
standard in Trademark Law. In verse, compare topassing off registered trademark, confusion
should be element of passing off. Because themeaning of passing off means regarding one’s
goods as someone else, it implies that there isconfusion.
4

Evaluation

Passing off has close relationship withtrademark laws in the UK and Japan. The
indications are almost protected by the law ofpassing off first, and then are absorbed into
trademark law. But, the situation is different in
China, the relationship between them is not clear.

Ⅵ Conclusion and suggestions
1

2

Passing off and trademark law in China

Conclusion and suggestions to China

Passing off and trademark law in Japan

In Japan passing off is one of very important
unfair competition act. So, the Unfair Competition
Prevention Act and Trademark law can becompared to two wheels of a car for maintaining
fair competitive order. 13 According to Japanesetheory, trademark infringement is one part of
unfair competition act. In other words, trademark
law is one part of the Unfair Competition
Prevention Act in the broad sense. So, many rulesof passing off of the Unfair Competition
Prevention Act are similar to rules of the
trademark infringement. The sphereofindications protected by the Unfair Competition

The law of passing off of the UK and thepassing off provisions of the Unfair Competition
Prevention Act of Japan are quite similar andsatisfy a change of commercial situations.
However, the passing off provisions of theAnti-Unfair Competition Law in China seem
under development and has some drawbacks.
Compare to the UK and Japan, the following four
aspects of passing off should be clearly regulated
in Chinese law: The sphere of indications should
be widened; The subjective state of mind
–intention as one element of passing off should beabandoned; Turn the administrative legal liability
as main measure into civil legal liability as main

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measure and administrative and criminal legal
liability as supplementary measure; Regard
Trademark Act as one part of the Anti-Unfair
Competition Law in broad sense and regulatespassing off provisions as promotion of trademark
law. In all, China should learn useful principles
about passing off from the UK and Japan.
2

Suggestions to Trademark Act of JapanAs described above all, passing off provisionsof Japan have developed well. Though passing off
provisions of the Unfair Competition Prevention
Act do not belong to the field of industrial
property right in Japan, they still have usefulenlightenment to the field of industrial property
right, especially to the Trademark Act.
Firstly, confusion is one element of passing
off. Because trademark infringement can be
regarded as one of unfair competition acts, manyrules of passing off judgment under unfair
competition law are similar to trademark
infringement. However, confusion is only used incourt to decide trademark infringement but not
regulated in the Trademark Act as judgment oftrademark infringement. So, confusion should be
regulated in Trademark Act as one judgment oftrade mark infringement.
Secondly, the sphere of indication protectedby the Unfair Competition Prevention Act iswider than the sphere of trademark protected by
Trademark Act. Before 1997, three dimensionalmarks can only be protected according to the
Unfair Competition Prevention Act. Some otherindications may appear in the future, and they
may be protected first by passing off provisions
according to the Unfair Competition Prevention
Act, because the law is apt to change ofcommercial situations. After that they may be
adopted by Trademark Act. Passing off provisionsof the Unfair Competition Prevention Act canpromote the development of Trademark Act.

9

Unfair Competition Prevention Act of Japan Art. 2(1)(i).
“It’s” series case, Osaka high Court.
11
Art. 6 (1) of Explanation of Unfair Competition《不正当竞争解释》6 条 1 款
12Art. 5.(3) An operator may not adopt the following
unfair means to carry to transactions in the market andcause damage to competitors: using, withoutauthorization, the business name or personal name of theother person on his own goods, leading people tomistake them for the goods of the other person;
13
Minoru Moribayashi, Prior Use on Trademark Law andUnfair competition Law, Annual of Industrial Property
Law, Vol. 26 May 2003, p93.
101(1896) 13 R.P.C. 218 at 224 (HL).
First cited as a precedent in Southern v. How (1617)
Cro Jac 468, 79 E.R. 400.
3(1979) A.C. 731.
4(1990)1 W.L.R.491; (1990)1 All E.R.873.
5
Act. 2(1) i of Unfair Competition Prevention Law ofJapan and Act 5 of Anti-Unfair competition law of China.
6
Christopher Heath, the System of Unfair Competition
Prevention in Japan, Kluwer Law International
publishing house, p81.
7Art. 5 of the Anti-Unfair Competition Law of China.
8
J B Williams & Co v. Bronnley &Co Ltd,(1909)26 R.P.C.
765(CA).
2

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