Jun 25, 2025 | Is it necessary to prove the Defendant’s motive to defraud in order to prosecute by Passing Off?

1. In Hong Kong, the simplest answer to the above question is “No”. Nevertheless, if the Plaintiff can better prove that the Defendant had “intention to defraud” (i.e. Intention to Deceive), the case will be more likely to be successful.

2. Recently, the author had received several cases where the Defendants were prosecuted by relying on innuendo (i.e. passing off) (also known as counterfeit). Since there is a gap in the similarity between the Plaintiff’s trademark and the Defendant’s trademark, the author suggests that the Plaintiff should add evidence to prove the Defendant had an “Intention to Deceive” behavior. By doing so, Plaintiffs can strengthen their cases.

3. Hong Kong is a region where the common law is enforced. To prove infringer insinuates, the Plaintiff needs only show that the Defendant’s counterfeiting would mislead or confuse the public into believing that the products purchased or services used are provided by or are related to the Plaintiff (i.e. associated with). It is not a necessary condition to prove that the Defendant had a motive to defraud.

4. When the trademark used by the infringer is not the same as the Plaintiff’s trademark or is somewhat dissimilar to it, the author recommends that the Plaintiff provides evidence of the infringer’s fraudulent motive. Depending on the quality of the evidence, this approach can help the court to issue judgment in favor of the Plaintiff.

5. In reality, fraudulently motivated behaviors include but not limited to the following:

a) The infringer has a “criminal record”, that is, he/she has been sued by the Plaintiff in the past;
b) The infringer publishes false advertisements about the Plaintiff’s products;
c) The infringer’s publication deliberately shrinks or hides important information
d) The infringer’s advertisement contains information that misleads the public; and
e) The infringer deliberately conceals important information…etc..

6. If the infringer uses a trademark that is similar (but not identical to the Plaintiff’s trademark), it may or has already applied to register the trademark it is using. Therefore, the author recommends that the Plaintiff also checks with the Intellectual Property Department to see whether the trademark has been successfully registered. If found, the Plaintiff should also consider applying to cancel the application of registration of trademark.

7. By the time the Plaintiff is able to rely on the fraudulent motive to sue the infringer, I believe most infringers will be ready to fight. Otherwise, the infringer can simply use a trademark that is exactly the same as the Plaintiff’s. Therefore, the Plaintiff should discuss with his lawyer a strategy that has an immediate effect (such as sending letters to the infringer’s buyers) to reduce the infringing activities. At the same time, action must be taken to prevent the infringers from making a clean getaway.