UK: High Court Monitors Reverse Passing Off

Last Updated: 20 October 2006
Article by Nick Beckett, Isabel Davies and Tom Scourfield

In determining an application for an interim injunction between two companies involved with internet monitoring software, the High Court has considered the law of reverse passing off, which involves a third party implying that the goods/services of a better known competitor are their own, thereby benefiting from the goodwill attaching to the Claimant’s products and services.

On the facts, only a limited injunction was granted, but the case provides a useful review of the applicable law in this rare form of passing off.

For the full article on the case of ScanSafe Limited v MessageLabs Limited, and Star Technology Services Limited v ScanSafe Limited (Ch. D.) please see below:

Full Article

In determining an application for an interim injunction between two companies involved with internet monitoring software, the High Court has considered the law of reverse passing off, which involves a third party implying that the goods/services of a better known competitor are their own, thereby benefiting from the goodwill attaching to the Claimant’s products and services.

On the facts, only a limited injunction was granted, but the case provides a useful review of the applicable law in this rare form of passing off.

Reverse Passing Off explained

Passing off requires the proof of three elements:

  1. goodwill
  2. a misrepresentation by the Defendant
  3. damage suffered by the Claimant as a result

In a classic passing off case, the Defendant will pass off goods/services as being those of the Claimant when they are in fact his own. For example, a customer may ask for a particular brand of soft drink cola by name, but be given a glass containing the cola of a different brand, without explanation of the fact they have received a different product to the one they asked for. This is called "switch selling". The Defendant has made a misrepresentation about the origin of the product by implying that the product supplied is the original product requested.

In reverse passing off, the opposite is the case. In this scenario the Defendant implies or suggests that goods/services have emanated from him when in fact they are the Claimant’s, often by advertising competing products offered by the Defendant in a sales catalogue, but using photographs of the Claimant’s actual products. In the above example, reverse passing off would occur when the Defendant (X) re-packaged Y COLA (someone else's product) and sold at as BRAND X as if the product were his own.

ScanSafe v MessageLabs

The Claimant, ScanSafe Limited ("ScanSafe"), produced corporate software that prevented employees accessing certain websites from their work computers, intended to boost productivity by preventing "recreational" web surfing. The defendant MessageLabs Limited ("MLab"), had a commercial arrangement to market and sell this software along with its own under a "White Label" Agreement. Accordingly, an ultimate consumer of the software would be unaware of the fact that the original service provider was ScanSafe, rather than MLab.

The relationship between the two companies deteriorated and MLab served two months notice that it would be producing its own version of ScanSafe’s software and the White Label arrangement was no longer required. However, MLab’s advertising and promotional material for the new software continued to imply a link with the original product by packaging the software as a "new" version (2.0) of the ScanSafe product. There was also evidence that sales agents described the new service as an update of the previous system.

ScanSafe applied for an interim injunction to restrain MLab from passing off and breach of contract. In addition to the allegations of passing off, ScanSafe claimed MLab was required to give nine months notice before it could transfer any existing customers to the new system.

Merits of Claim and Balance of Convenience

A key assessment for the grant of any interim injunction is the Court’s determination of the balance of convenience. However, in this case, Patten J. avoided a detailed assessment of the balance of convenience by focusing on the merits, informed by the practical issues pending trial.

In this case, it was difficult for ScanSafe to establish that MLab was misappropriating their goodwill and reputation as under the White Label arrangement the true source of the services remained unclear. In fact, Patten J. held that the goodwill generated by the existing service was likely to be accrued by MLab, not ScanSafe, under the terms of the White Label Agreement.

Faced with this issue, ScanSafe argued that whilst they might for current purposes have consented to the accrual of goodwill under the White Label arrangement, once it had terminated, MLab were not entitled to claim a common technical origin between the original software, and the new version 2.0. (developed by MLab alone). In effect an association of common origin between the two products was a misrepresentation.

Patten J noted "A permission to brand goods as one's own entitles the licensee to use the commercial reputation of the goods or services to make sales of that product in its own name. To that extent, it permits the licensee to accrue goodwill generated by the product for its own benefit. But it does not, without more, carry with it the right to trade on the reputation of those goods in order to market a similar product that does not originate from the same source as if it does. Such conduct would be a misrepresentation by that defendant and one not authorised by the Agreement. "

The issue to be determined at trial was whether on a true construction of the White Label arrangements the accrual of goodwill prevented the ScanSafe from having the necessary cause of action in passing off. For current purposes however, an arguable case had been made out.

Ultimately, Patten J determined that only a limited injunction was required to ensure no misrepresentation was made pending trial and declined to grant the full injunction sought, or impose the wide undertakings (voluntarily offered) by MLab. He ordered that any customer of MLab who enquired about the new software should be given a copy of a press release which detailed the change in relationship between the parties and explained that the new software was not a further version of the original product but a totally new product.

Review and Comment

Whilst reverse passing off cases are relatively rare, the use of a press release to limit relief granted is even rarer. This case does serve as a useful reminder that the law of passing off is a flexible and practical remedy, which often has application far beyond the more traditional cases with which the tort is usually associated. It is also somewhat unusual for the Court to consider the detailed merits of the claim and be prepared to enter into a "mini-trial" of contractual interpretation. Typically an interim injunction hearing will focus on the balance of convenience after only a limited review of the merits.

It is also interesting to note the robust case management applied by the Court in this case, which had the practical effect of not only limiting the relief granted pending trial, but refusing to endorse much wider undertakings already offered by the Defendants.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 20/10/2006.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.