Written by Samuel O’Toole | January 20, 2023
Trade marks take two general forms, “registered” trade marks (which require an application to be made and accepted by an Intellectual Property Office) and “unregistered” trade marks (which require hard work, sweat and sometimes tears (sweat and tears mostly optional)).
Unregistered trade marks refer to what we IP lawyers call “passing off”. Passing off it is based on in 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 you would also most likely be passing us off which isn’t allowed by the law.
Passing off can get quite complicated very quickly and is full of uncertainties, three uncertainties to be precise:
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 gives a link between the brand and your goods/services (this is where the sweat and sometimes tears comes in).
Second, we, unfortunately, need a third party who is misrepresenting to others that 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.
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 the other you, and not the real you, because the other you is using your brand. This is going to cause you damage in terms of lost sales and also be very annoying (additional tears 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 an ability to grant you a number of remedies and you can be entitled to an injunction (to prevent the other party from using the brand) and damages (to compensate you).
The law of passing off is certainly a good thing but it should be treated with caution, for example proving and evidencing goodwill (eg 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.
All of the Briffa lawyers are experts in unregistered trade marks, passing off and intellectual property. If you want to discuss registered and unregistered trade marks, why not give us a call for a free consultation.
Written by Sam O’Toole – Associate
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