How to Protect Your Brand and Reputation:
UNREGISTERED TRADE MARKS
AND PASSING OFF
In this feature, Tim Blower, a registered Trade Mark Attorney with IP-Active.com, offers advice about:
- What is an unregistered trade mark?
- What is passing off?
- What is the difference between the letters TM and R in a circle ®?
- The practical consequences of the law of passing off
What is an unregistered trade mark?
An unregistered trade mark is a trade mark which hasn't been registered. There is no legal obligation to register a trade mark, and no requirement (unlike for a patent application) that an application to register a trade mark must be filed before using the trade mark. So, an application to register a trade mark can be filed at any time, even several years after starting use of a trade mark.
What is passing off?
Passing off is a UK common law right, which has arisen out of judge made law, on the simple common sense basis that it should be an offence for one trader to misrepresent his goods or services as those of another, and so deceive customers into purchasing his goods (or services) when they thought they were purchasing those of another. (That's the last time that "simple" will be used in relation to passing off, by the way.)
Passing off has been applied broadly, as something of a "catch all", to cover things as diverse as the similarities between product packaging; to protect product "get up"; and the unauthorised use of a racing driver's name to endorse a radio broadcast. It is completely separate to, but often sits alongside, the law of registered trade marks. Thus it is not necessary for a trade mark to be registered for a passing off action.
Usually, for passing off, there are three necessary elements. Firstly, it is necessary to show that a trade mark, get up or whatever has a reputation, or at least goodwill (this is sometimes referred to as "protectable goodwill"). For this reason, passing off cannot be used to protect a trade mark which is new, with little reputation, or where no trade in the UK has taken place. Secondly, it is necessary to show that a misrepresentation has taken place or is likely. This requires that the trade mark complained of must be sufficiently similar to the trade mark of the claimant for a customer to be deceived. Thirdly, there must be a likelihood of damage as a result of the deception.
The existence of these three elements must be proved by evidence, so that a passing off action carries a high evidential burden (in other words you will have to work hard to win), but it nonetheless provides a possible remedy when, for example, there has been blatant copying of a get up, when or a trade mark has not been registered but has substantial use and a reputation.
The practical consequences of the law of passing off
Essentially, the law of passing off means that in choosing a trade mark, you should consider whether there are any earlier relevant registered trade marks (by searching trade mark registers) and also whether there are any relevant unregistered trade marks (by undertaking common law searches such as general internet searches). Just because a mark isn't registered, doesn't mean that you won't infringe by using a similar mark.
What is the difference between the letters TM and R in a circle ® ?
You will have seen the symbols ™ and ® used. Some practitioners say that ™ stands for 'totally meaningless', since it is used for an unregistered trade mark, and as such has no specific legal force, whereas ® is used to designate a registered trade mark. However ™ can mean that the trade mark owner regards the mark as a proprietary mark, and may have passing off rights, and may have filed an application to register the mark which is still pending. Hence, care must be taken in such circumstances.
More trade marks information
At IP-Active.com, we have experience of advising and acting on behalf of our clients in relation to unregistered trade marks and passing off, trade mark oppositions, trade mark invalidity actions and infringement actions.
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