Not every brand right depends on registration. The common law tort of passing off has protected unregistered business goodwill for over 150 years — and in Australia, the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) provides a parallel statutory remedy for misleading and deceptive conduct that applies regardless of registration. EAGLEGATE advises businesses and brand owners on passing off claims and misleading conduct claims arising from the imitation or misappropriation of unregistered brand identity.

EAGLEGATE is Doyle’s Guide-recognised for Intellectual Property in Queensland — Recommended 2020–2025, Leading 2026. Nicole Murdoch is a registered trade marks attorney and Fellow of the Institute of Patent and Trade Marks Attorneys of Australia (FIPTA).

Goodwill in a trading name is a valuable commercial asset — and passing off is the law’s mechanism for protecting it.

Key Passing Off Claims Expertise — Prove, Enforce, Protect

The Three Elements of Passing Off

A passing off claim requires establishing three elements, as confirmed by Australian courts and the High Court: first, that the plaintiff has goodwill or a reputation associated with their goods or services in Australia; second, that the defendant has made a misrepresentation — express or implied — that their goods or services are those of, or are associated with, the plaintiff; and third, that the plaintiff has suffered, or is likely to suffer, damage as a result of that misrepresentation. EAGLEGATE advises on establishing each element with the evidentiary precision that a passing off claim requires.

What Constitutes Goodwill?

Goodwill is the advantage that a business has acquired by reason of the identity it has established in the market — the association in the minds of customers between the trading name, get-up, or brand and the specific source of goods or services. Goodwill is built through trading activity and is lost if the identity ceases to be distinctive. In Australia, establishing goodwill requires evidence of the extent of the plaintiff’s trade under the relevant name or mark, the duration of trading, and the distinctiveness of the identity in the relevant market.

The Misrepresentation Requirement

The misrepresentation in passing off does not require an intention to deceive. It requires conduct — typically the use of a name, mark, get-up, or brand that is so similar to the plaintiff’s as to lead consumers to believe that the defendant’s goods or services are those of, or associated with, the plaintiff. Courts assess the likely effect of the misrepresentation on the relevant class of consumers — not whether the defendant intended deception.

Australian Consumer Law — Misleading and Deceptive Conduct

Section 18 of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) prohibits conduct in trade or commerce that is misleading or deceptive, or likely to mislead or deceive. This statutory remedy overlaps significantly with passing off — but is broader in several respects. It does not require proof of goodwill in the traditional sense, and it applies regardless of whether the conduct involves a trade mark or brand name. EAGLEGATE advises on both passing off and misleading conduct claims, pursuing both in parallel where the facts support it.

Brand Get-Up and Trade Dress

Passing off is not limited to trading names and marks. The overall get-up of a product or business — its appearance, packaging, colour scheme, and presentation — can be protected through passing off where it has acquired a distinctive association in the market. EAGLEGATE advises on get-up and trade dress passing off claims arising from product imitation and brand copying.

Domain Names and Online Brand Imitation

The registration of a domain name that incorporates another business’s trading name, or the operation of a website in a way that imitates another business’s online brand identity, can give rise to passing off and misleading conduct claims. EAGLEGATE advises on online brand imitation disputes and on domain name recovery proceedings.

1. Establish Goodwill

We gather evidence of the plaintiff’s reputation and goodwill in the relevant market — trading history, consumer recognition, advertising spend, and market reach — to establish (or dispute) the foundational element of the passing off claim.

2. Identify the Misrepresentation

We identify how the defendant’s conduct allegedly constitutes a misrepresentation — whether through name, get-up, advertising, or online presence — and assess the likely effect on the relevant class of consumers.

3. Quantify Damage

We advise on any damage caused by the misrepresentation — actual and likely — and prepare the evidentiary basis for a damages claim or, where the harm is ongoing, an injunction to restrain continued passing off, or to defend a claim.

4. Enforce

We pursue passing off and misleading conduct claims through cease and desist demands, interlocutory injunction applications, and Federal Court proceedings where required.