Someone has copied my brand name and I don’t have a trade mark – is there anything I can do?

Whilst it is always advisable to trade mark your brand name, this does not then mean you have no protections for your brand, especially if you find someone has copied it or is using a very similar brand name.  Whilst a registered trade mark offers the owner a monopoly right to stop third parties from using identical or similar marks in relation to identical or similar goods and services, it is also a valuable asset to have.  Nevertheless, we appreciate sometimes investment in IP can take a back seat at the early stages of a business.

However, if you find that an individual has copied your brand name, you may still be able to rely on unregistered rights.  In the UK, you can enforce unregistered rights subject to being able to meet certain criteria.  In the UK, we have what’s called ‘Passing off’. Passing off is a tortious claim which is subject to 3 key principles:

1. Goodwill – you must evidence that you have acquired earlier goodwill in the brand name. The most common evidence to show highlight goodwill would be sales to UK consumers.  It is important to note that sometimes you may have a reputation in the UK because you are a large brand name in other jurisdictions, however this is not goodwill. Importantly, you need to evidence sales.
2. Misrepresentation – there is a likelihood of misrepresentation by the individual, whether intentional or not, that leads UK consumers to believe the goods/services offered by the individual are in fact those offered by you. The misrepresentation must create a likelihood of deception among the relevant public.
3. Damage – As result of the misrepresentation, damage flows. This can be damage to your sales, to your reputation as business or dilution of the distinctiveness of your goods or services

If you are able to evidence all three points, you may be able to successfully rely on your unregistered rights.  Significantly, relying on passing off does place an increased evidential burden on you which is why it is always advisable to seek a registered trade mark if possible.  As explained, registerable rights offer a much safer and more reliable form of protection.

If you need assistance in protection your brand, please contact one of our specialised intellectual property lawyers by contacting info@briffa.com.

Thomas Staveley – Associate Solicitor