Protection without registration: passing off

You may believe that you have no way of protecting a trade mark that you haven’t registered.

Well, you would be wrong.

You may be able to prevent the other party from using a trade mark that you were using first through passing off.

Passing off is a common law action which allows a party to prevent another using a specific mark if they can show they have developed ‘goodwill’.

Goodwill can be difficult to pinpoint but just having a reputation is not enough. The user would have to show they have a reputation, a clear degree of recognition and the public does associate the mark with the passing off claimer.

In addition to giving evidence of goodwill, the user will need evidence that the mark originated from them and the goodwill in it was harmed by the use of the third party.

This is not a straightforward claim to make, it can be very time consuming and costly as every element needs to have supporting evidence. This evidence needs to be fully considered to ensure that it is sufficient to show the required elements.

If you have mark which you are currently using as an indicator of your business, which is not registered, it is important that you register it to ensure your process of protection is much simpler and cheaper.

The fees for registering a trade mark in the UK are below £500 and are a worthwhile investment for a business to ensure that its brand, which has never been more important, is protected.

For more information and to start your protection ball rolling, contact The Trademarkroom, trade mark experts with a client focus.

By Ellis Sweetenham