Availability of Trade Mark Infringement Actions

In order to defend your registered trade mark, you are entitled to bring a trade mark infringement action against any third party who, without permission, uses in the course of trade a sign (such as a brand name or logo) which is:

  • Identical to your earlier registered trade mark for identical goods or services; or
  • Identical or similar to your earlier registered trade mark for identical or similar goods or services or there is a likelihood of confusion; or
  • Identical or similar to your earlier registered trade mark which has a reputation, the use of which would take unfair advantage of or be detrimental to the distinctive character or repute of your earlier registered trade mark.

If your trade mark is not registered, you must rely on “unregistered rights” (if any) you have in the relevant mark. Such unregistered rights are protected in the UK by the law of passing off.

To succeed in a claim for passing off the basic elements which you would need to prove are that;

  1. You have a reputation or goodwill in a mark (such as a brand name or logo) – i.e. that the relevant public recognise the brand name or logo as belonging to a particular business;
  2. There has been a misrepresentation (i.e. a third party has used your brand name or logo without your permission, which has confused the relevant public); and
  3. You have suffered loss due to the misrepresentation.

Due to the large amount of evidence required to bring and succeed in a claim for passing off, it is generally more difficult and more expensive when compared to bringing a trade mark infringement action. In addition, the outcome of passing off litigation is usually less predictable. Perhaps most crucially, a passing off action is only available when it can be demonstrated that your brand name or logo has a reputation (goodwill).

A registered trade mark is also protected by the law of passing off provided that a reputation and/or goodwill in the mark (such as the brand name or logo) can be established, although it is likely that trade mark infringement actions will be more appropriate in most instances.

For more information on trade mark infringement, please refer to the Trade Mark Infringement and Enforcement section.

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