Are you concerned about the rights afforded to you by an unregistered trademark?
A registered trademark gives the owner exclusive rights to use that trademark and prevent others who have the same or confusingly similar marks in their area of business. An unregistered trademark, on the other hand, is not protected by a legal statute but it is still a mark used to distinguish a business or individual from others.
What rights do you have with an Unregistered Trademark
An unregistered trademark has limited rights which can be difficult and more expensive to enforce, often leaving small or medium-sized businesses unprotected and vulnerable. If your unregistered trade mark is infringed by another party, your claim will have to be based on the law of passing off.
Passing off provides legal rights to stop another party from misrepresenting their goods or services as being of another. In simple terms, if another company were to use identical branding, visualisation or packaging that it could deceive the public, a claim for passing off can be made.https://freemanharris.co.uk/services/intellectual-property/passing-off-claim-solicitors/
Passing off is difficult to prove. You need to evidence that
- your goods have acquired goodwill or reputation in the mind of the purchasing public and are known by some distinguishing feature;
- there has been a misrepresentation (intentional or unintentional) by the other party which leads (or is likely to lead) consumers into thinking that goods offered by the other party are those of the claimant; and
- damage has resulted or is likely to result as a consequence of the misrepresentation.
Why having a registered trade mark is more appropriate than relying on passing off
A good example of the difference would be a logo that your company uses but has not been registered with your region’s IPO (Intellectual Property Office). If your logo was registered however, you would have a trademark.
If there is no trade mark, then a claims will need to be made for passing off if an individual or organisation has used your mark and passed it off as their own. Three elements need to be fulfilled in order to make a passing off claim: goodwill, misrepresentation, and damage.
Goodwill means that your company or organisation had a reputation and thus, had benefits that come with this good name. This will mean disclosing marketing expenditure, providing sales data, social media engagement a number of other metrics. It is not enough if have limited numbers to rely upon.
To meet the misrepresentation aspect of the criteria, deception must have occurred or is likely to occur because of the misrepresentation that took place as a result of the infringer passing off your mark as their own. You will have to get evidence of the other party’s use of a similar mark, and to show that there is a likelihood of confusion amongst consumers.
Lastly, to meet the damage aspect of this claim, your organization must have experienced some form of damage or at least the possibility of damage as a result of the infringer’s use of your mark.
We always recommend registering your trademark but if you have not, we are still here to help.