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Protecting your intellectual property is vital, as this can help develop your business’s brand and reputation. However, competitors may attempt to ‘pass off’ your goods in their name. If you are a business in England and possess an unregistered trade mark, you should know how you can best protect your intellectual property from competitors.
This article will discuss the best means of trade mark protection available to you and your business. It will also discuss how you can protect against passing off.
What is Passing Off?
Passing off occurs when someone attempts to pass off goods or services as their own when they belong to someone else. If your trade mark is unregistered, you may still wish to challenge competitors who use your trade mark without your consent.
You can challenge others who infringe your trade mark rights under the law of passing off. However, you can generally only bring a claim in passing off for unregistered trade marks. Examples of when you might engage the law of passing off include when another business:
- uses your unregistered trade mark;
- sells products associated with your trade mark as their own; or
- claims they have a license to use your trade mark when they do not.
There are many other possible situations which may occur. However, as stated, you would generally only bring a claim in passing off where you have not registered your trade mark with the Intellectual Property Office. Your claim’s effectiveness depends on your trade mark’s strength and how much goodwill you have built amongst your consumers.
How does Passing Off Work?
To establish passing off, you must prove you have developed goodwill or reputation around your products or services. In addition, you must have built this goodwill or reputation up around a specific trade mark. In other words, strong consumer trust is a vital element in a passing off claim. Consumers should purchase your products or services because of the trade mark attached to them.
You must also demonstrate that a misrepresentation has occurred, regardless of malicious intent or innocence.
You must finally show that your business has suffered damage due to the misrepresentation. If you can prove your competitor has caused financial or reputational damage, they may owe you substantial compensation.
Therefore, there are many different points that you must prove for a successful claim in passing off. However, you have registered your trade mark with the Intellectual Property Office, the process is much more straightforward. This is because your registration will be sufficient proof of ownership of the mark and exclusivity over its usage.
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What is Goodwill?
Passing off claims must show that your business has developed ‘goodwill’ within the UK. Goodwill refers to the ability of customers to purchase goods or services by identifying your brand or business from your trade mark.
There is of course an important reputational element as well. Therefore, it is important that your business has established its brand and your customers rely on your unregistered trade mark to direct consumers to your products or services. Only the owner of goodwill can make a successful claim in passing off. Therefore, for a successful claim, you must prove that:
- you have a strong customer base;
- your customers associate your products with your trade mark;
- you are actively trading; and
- your brand reputation is interlinked with its products.
Potential Remedies
If your claim is successful, the court may mandate a range of remedies, including but not limited to:
- compensation or damages for financial or reputational damage;
- an injunction to stop the business from passing off your goods or services as their own;
- an order for destruction of any goods that infringe your rights; or
- an order for the cessation of any services that infringe your rights.
Therefore, passing off can be a very effective method of protecting your unregistered trade mark rights.
Passing Off vs. Trade Mark Infringement
Passing off and infringement proceedings for registered trade marks are both civil rather than criminal legal procedures. This is because they both seek to restore and protect your rights. However, you can register your trade mark with the Intellectual Property Office to make protecting it from infringement significantly easier.
You should register a trade mark if you can, as this is the best way to deter competitors from infringing your rights. Competitors can infringe your rights by:
- imitating your products;
- using your logo without consent; or
- otherwise using your trade mark for their own benefit.
When you register your mark, you can use the ® symbol next to it. This displays your ownership of rights and acts as a warning to other businesses that you can take legal action against anyone who uses your mark without consent. You do not need to prove ownership or goodwill to take infringement action for a competitor using your registered mark.
Therefore, claims in infringement are a much easier process. You can start legal proceedings immediately if you can prove that the other business infringed on your rights.
Key Takeaways
In England, you can protect your unregistered trade mark through claims in passing off. This will help inhibit competitors from passing off your trade mark, or associated goods and services, as their own.
To be successful in a claim for passing off, you must be able to show that:
- you have built up a strong reputation for the associated trade mark;
- misrepresentation has occurred by another business; and
- this misrepresentation has resulted in financial or reputational damage
In contrast, registered trade marks do not need to prove ownership or goodwill and can begin infringement proceedings more straightforwardly. You should speak to a legal professional to consider the best option for your business if you believe you are a victim of a competitor passing off your trade mark as their own or if you wish to register a trade mark.
If you need help or advice around a passing off claim, or registering a trade mark, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.
Frequently Asked Questions
You must be able to show that you have built up goodwill and a strong reputation for your business based on the trade mark. You must also show that there has been a misrepresentation by another business and that your business has suffered damage due to the misrepresentation.
Due to the various elements required, a claim of passing off can be difficult to prove. You will need to be able to show evidence of all elements required. It is certainly more straightforward to launch trade mark infringement proceedings if your trade mark is registered with the Intellectual Property Office.
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