Passing off before the UKIPO: A reminder that goodwill must be proven, not assumed

The UK Intellectual Property Office’s ("UKIPO") recent decision in an invalidation decision against Hamid Sheikh's (the "Proprietor") trade mark registration filed by Just Airports Chauffeur Services Ltd (the "Applicant") provides a useful illustration of what businesses must show to succeed in a passing off claim and why long standing use or heavy advertising will not fill evidential gaps.

Although the Applicant had traded for more than two decades in the London airport transfer market, it's passing off claim failed at the first hurdle: proving goodwill. The outcome underlines a consistent theme in UKIPO practice that passing off is evidence heavy and businesses relying on unregistered rights must be prepared to substantiate the trade they say they have built.

The dispute

The Applicant sought to invalidate the Proprietor's trade mark registration covering airport transfer services. They relied on the unregistered sign JUST AIRPORTS, alleging long use and consumer recognition.

What the UKIPO looked for - and what was missing

To succeed in a passing off action, the Applicant needed to show:

• Goodwill in the unregistered sign;
• Misrepresentation leading the public to believe the parties were linked; and
• Damage flowing from that misrepresentation.

The first hurdle – goodwill

Goodwill refers to the reputation a business has built up among its customers that allows the public to associate particular goods or services with that business. It is a form of commercial value that arises from factors such as brand recognition, customer loyalty, and the distinctiveness of the trader’s offerings. Goodwill is therefore about the “)  the attractive force which brings in custom" (Inland Revenue Commissioners v Muller & Co's Margarine Ltd [1901] AC 217 (HOL))

Goodwill must be real, substantial and attached to an identifiable customer base. To succeed in a passing‑off claim, a business must show that, at the relevant date, customers in the UK associated the sign with its goods/services and relied on it as indicating the commercial origin of those goods/services. This requires evidence of actual trading activity, that the business has attracted paying customers, developed repeat custom and built up a recognisable reputation under the sign. Goodwill can therefore be demonstrated through consistent sales, evidence of repeat clients, market presence and documentation showing that the business has built up a commercial footprint over time.

The UKIPO expects this to be supported with straightforward but concrete evidence of trading activity such as turnover, customer numbers, order volumes, repeat clients, accounts etc

In this case, the evidence fell short. While the Applicant provided company records dating back to 1999, snapshots of a long-standing website and proof of over £115,000 in Google AdWords spend over three years, the evidence of actual customers or turnover was extremely limited.

Only 12 invoices before the relevant date were provided, totalling around £4,000. No turnover figures, sales summaries or customer records were put forward. The hearing officer reiterated that the burden lies on the Applicant to prove goodwill and that the 12 invoices filed were clearly insufficient to establish a more than trivial goodwill at the relevant date. The hearing officer went on to state that an assumption could be made that, at the relevant date, the Application had more than 12 clients in the UK on inferences drawn from the length of use and the advertising spend, both which suggest that the Applicant had sufficient trading activity to keep its business going for many years and invest a reasonable amount of money in promoting its website. However, the hearing officer said "that it would be fair, or just, or reasonable for me to attempt to guess how much more trade and customers the applicant enjoyed based on the evidence about promotional activity and length of use. In the absence of information about turnover and/or sales, it is not my job to fill the gap or make assumptions about basic facts that the applicant was required to prove."

Descriptive signs face a tougher evidential burden

In addition, the UKIPO also noted that the sign JUST AIRPORTS is descriptive (or at best weakly distinctive) for airport transfer services. This significantly raises the bar as descriptive signs require stronger evidence that consumers have come to associate the term with one business alone.

The limited customer evidence meant that this could not be shown.

As the Applicant failed to establish sufficient goodwill, the invalidation action failed at the first hurdle.

What this means for brand owners

This decision reinforces several important points for businesses relying on unregistered signs:

1. Goodwill must be evidenced clearly

Even long-standing trading activity must be demonstrable. Invoices, turnover figures and customer records are highly persuasive assumptions or general statements of use are not enough.

2. Descriptive names are harder to protect

Where a trading name describes the service (as in this case), significantly more evidence is required to show that consumers see the sign as a brand rather than a descriptor.

3. Advertising alone does not establish goodwill

Marketing spend, however substantial, cannot replace proof of customer engagement and commercial activity.

4. Consider registered protection early

Trade mark registration is often the most efficient way to secure rights. Relying solely on unregistered signs can leave businesses exposed unless they maintain strong, contemporaneous evidence of use.

Key takeaways

Although this decision turns on its own facts, it reinforces a wider point that relying on unregistered rights requires more than longstanding use or brand history. Passing off is evidence‑driven and the UKIPO will expect clear records showing real customer engagement and meaningful trade.

More broadly, the decision highlights the vulnerability of descriptive branding and the difficulty of establishing protectable goodwill where consumers are likely to view a sign as descriptive rather than distinctive. For brand owners, it underscores the value of early trade mark protection and of keeping robust evidence of use where unregistered rights are part of a protection strategy.

Need advice? Our IP team regularly helps clients clear, register and enforce their brands - whether you are building a new identity, trading under a long‑established name or seeking to strengthen evidential foundations for unregistered rights. If you would like to discuss your options, we would be happy to help.