The word trade mark is generally understood to mean a trade mark registered with the intellectual property office (IPO) of the country a trade mark has to be protected in. That is not the case. A trade mark can be registered or unregistered.
What is an unregistered trade mark?
Described in simple terms, an unregistered trade mark is a brand used by a business under which it sells goods or services to members of the public. The brand is often a name, an accompanying logo and can be a slogan as well. It distinguishes the business from its competitors. Unlike a registered trade mark, the brand has not been registered with the IPO of the country the business operates in.
In this country, unregistered trade marks are given protection under common law. This means that a business can rely on the goodwill and reputation it has generated in its brand to prevent others from using a similar name, logo or slogan for similar goods or services.
Law of passing off
The protection under common law is also known as passing off. If another business is using an identical or similar brand name, logo or slogan as yours, you can make a claim for passing if you don’t have a registered trademark. As I stated, passing off is a common law action that can be used to protect unregistered trade mark rights in the UK. A claim for passing off is based on the premise that no one has the right to misrepresent their goods/services as originating from someone else.
There are three necessary ingredients for a claim for passing off, as set out in the case of Reckitt & Colman Products Ltd v Borden (the Jif Lemon case):
- the claimant’s goods/services have acquired goodwill or reputation in the mind of the purchasing public and are known by some distinguishing feature, e.g. distinctive packaging or get up
- there has been a misrepresentation by the defendant which leads (or is likely to lead) consumers into thinking that goods/services offered by the defendant are those of the claimant, and
- damage has resulted or is likely to result as a consequence of the misrepresentation
However, to bring a claim in passing off is costly and difficult to run because the onus is on you to prove reputation and goodwill. We would recommend filing your trade mark and notifying the other party that you have a successful business under the name.
A claim for passing off is not easy, and although unregistered trade mark rights exist, they are not easy to enforce, so call us for advice, and we will tell you where you stand if another business is using your brand.
