Covid-19 Update: We are continuing to provide our usual services whilst maintaining the safety of clients and colleagues. Read our latest update here.

Complete the form below to ask us a question or make an enquiry. We’ll get back to you via phone or email as soon as possible.

Insights

What if you don’t register a trade mark?

Posted on 23rd April 2015 in Intellectual Property

Posted by

Jill Headford

Partner and Solicitor
What if you don’t register a trade mark?

We often refer on this blog to the need to register a trade mark because of how difficult it is to stop a competitor using your name without one.

An action called ‘passing off’ is usually the only hope for a business which does not have a registered trade mark and wants to stop a competitor copying its name or logo to take unfair advantage of its reputation.

Passing off requires three things:

  1. Established goodwill in the name or logo, i.e. the name has a reputation as a result of the claimant’s trading efforts.
  2. The competitor’s use of the name will confuse an ordinary person enough to make them think the competitor’s product or service is connected with the claimant’s.
  3. The competitor’s use of the name has caused damage to the claimant – either in lost sales or reputational damage from an inferior product.

It is the second factor which tends to cause the greatest difficulty. It requires evidence from an ordinary purchaser of the claimant’s product or service which shows that they thought they were buying something from can imagine is difficult, expensive and highly unappealing to any business.

Contrast this with the ease of stopping infringement of a registered trade mark where there is no need to show damage so it doesn’t matter whether the competitor has started trading yet and no need to show confusion if the competitor is selling similar goods. Also, it doesn’t matter if the claimant hasn’t developed any sort of goodwill in the trade mark yet. Finally the costs of registering a trade mark are trivial compared to going to court, not to mention the ongoing reputational damage that can be caused by copying which could have been prevented with a registered trade mark.

Company & Industry

Related Insights

Insights

Supreme Court delivers judgment on whether iPhone users entitled to compensation

Posted on 12th November 2021 in Intellectual Property

In a very clear judgment handed down on 10 November 2021, the Supreme Court has confirmed that, in order to claim compensation from an organisation which has breached its requirements as a data controller under the Data Protection Act 1998 (“the Act”), an individual must prove that the failure has caused material damage or distress to the individual concerned.

Posted by

Oliver Kent

Trainee Solicitor
Insights

Homeworking and the importance of cybersecurity

Posted on 25th March 2021 in Intellectual Property, Coronavirus Pandemic

Having staff working remotely has presented significant challenges for many businesses, but one of the most difficult to address is the increased cybersecurity risk. As many companies did not have sufficient opportunity to prepare for the transition to homeworking, they may not have identified potential cybersecurity issues. Moreover, it is now much harder to monitor staff and ensure they are following safe practices.

Posted by

Jill Headford

Partner and Solicitor