Unregistered Trade Marks In The UK: What Protection Do You Have?

Written by Samuel O’Toole | January 20, 2023

Trade Marks

Trade marks are a valuable asset for any business, helping to establish brand identity and reputation in the market. A trade mark can be a logo, symbol, word, phrase, or combination thereof, which is used to distinguish a business’s goods or services from those of its competitors. In the UK, the registration of a trade mark is not mandatory, but it can provide a business with several benefits.

As such, trade marks can take two general forms:

  • “Registered” trade marks, which require an application to be made and accepted by the UK Intellectual Property Office (UKIPO).
  • “Unregistered” trade marks, which require hard work, sweat and sometimes tears (the sweat and tears are mostly optional).

In this post, we’ll take a look at unregistered trade marks in the UK, and try to understand what protection is available. Let’s dive in.

What is an unregistered trade mark?

An unregistered trade mark is a mark that a business uses to distinguish its goods or services from those of its competitors, but it has not been registered with the UK Intellectual Property Office (UKIPO). In the UK, unregistered trade marks are protected under common law, which means that a business can rely on its use and reputation to prevent others from using a similar mark in connection with similar goods or services.

Protection of unregistered trade marks in the UK

Unregistered trade marks in the UK are protected under the common law of passing off. Passing off is based on the principle that no person has the right to represent their own goods or services as being the goods or services of a third party. For example, if you were to use the BRIFFA brand to mislead consumers into thinking that you were us, that would be strange and we may be able to make a claim for passing off.

However, passing off can quickly become very complicated and it is full of uncertainties – three uncertainties to be precise:  

  1. First, in order to be able to rely on the laws of passing off your goods/services will need to have acquired “goodwill” in the mind of consumers. The Courts have explained that goodwill is “the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom”. At a very high level, this means that your goods/services must have been sold to consumers in the UK under that brand, which links the brand and your goods/services (this is where the sweat and tears come in).
  2. Second, we, unfortunately, need a third party who is misrepresenting to others that their goods/services sold under the brand are actually yours (this is the BRIFFA example above). The misrepresentation can be intentional or unintentional but it does need to exist
  3. Third, and again unfortunately, we need you to have sustained damage, or be likely to sustain damage, in relation to that misrepresentation. For example, consumers buying things from a third party, and not the real you, because the other party is using your brand. This is going to cause you damage in terms of lost sales and also be very frustrating (additional tears are optional at this stage).  

If you can prove the above three points, you are most likely in with a chance of a successful passing off claim. It can be quite a slog to get there and the biggest hurdle in passing off claims is the amount of evidence that is needed to show the goodwill, misrepresentation and damage – this usually involves lots of details about your brand, how long you have been using it, where you have been using it and how the other party has been using it. 

Once the above elements are made out, the Court has the ability to grant you a number of remedies, such as an injunction to stop the other business from using the infringing mark, damages to compensate for any losses suffered, or an account of profits made by the other business as a result of using the infringing mark.

The law of passing off is certainly a good thing, but it should be treated with caution. For example, proving and evidencing goodwill (e.g. your rights to the brand) is a long task and not without its uncertainties. This is why we would generally recommend that in addition to your unregistered trade mark rights, you should also have a registered trade mark (you can have both) as the beauty of a registered trade mark is that all the important details are written on the registration certificate, which will also look great when hung up in your office.  

Advantages and disadvantages of unregistered trade marks

An advantage of using an unregistered trade mark is that there are no registration fees involved, and it can provide a basic level of protection before registration. Also, as the reputation of the mark grows, it becomes more difficult for others to use a similar mark in connection with similar goods or services. Additionally, if a business is unable to register a mark because it does not meet the requirements for registration of the trade mark, an unregistered trade mark may still provide some level of protection.

However, unregistered trade marks come with several disadvantages compared to registered trade marks. For example, the protection provided by an unregistered trade mark is limited to the geographic area in which the business has used the mark and developed its reputation. Also, it can be more difficult to enforce the protection of an unregistered trade mark compared to a registered trade mark. Furthermore, unregistered trade marks are likely to not be as effective in preventing other businesses from using similar marks or registering similar marks.

Final notes

To summarise, while registration of a trade mark provides a business with stronger protection, unregistered trade marks can still provide some level of protection in the UK under the common law of passing off, however to a lower degree compared to its registered counterpart.

Furthermore, it is important to note that the protection provided by an unregistered trade mark is limited. As such, businesses should carefully consider the advantages and disadvantages of using an unregistered trade mark versus a registered trade mark.

All of our lawyers are experts in unregistered trade marks, passing off and intellectual property. If you want to discuss this more and learn what’s right for your business, why not fill in the form below to request a free consultation? 

This post was written by Sam O’Toole and Charlotte Owens.

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