Trade marks and passing off

Trade marks are signs which distinguish the goods and services of a particular business – or its 'brand' – from others.

They may consist of a brand name, logo, shape, slogan, or style of trading or packaging.

Trade marks can even be sounds or smells, but these are harder to register.

'Unregistered' trade marks will arise automatically when you start to use them in connection with your business.

If the mark is distinctive, is capable of distinguishing goods and services, and is not offensive or misleading (or otherwise excluded from registration), you can apply for it to be registered in the UK, Europe-wide or internationally.

Registering a trade mark means that no one else can use it, even if they claim to have come up with the same mark independently.

Both UK and EC registered trade marks last for 10 years but can be renewed for further 10 year periods.

Both individuals and businesses can register a trade mark. The entity registering the trade mark will be the one owning the mark’s intellectual property rights. This means that:

• If a trade mark is registered under a business name, it becomes a valuable business asset which can be licensed or assigned to other entities;
• If a trade mark is registered by an individual, the intellectual property rights remain with this individual and cannot be seized as part of the company’s assets.

If a third party uses one of your unregistered trade marks you can bring an action against it for 'passing off' if you can show all of the below:

• your business has a reputation in the mark; and

• others have confused the third party’s brand for yours; and

• your business has been harmed as a result.

In the first instance, you can consider using a Cease and desist letter to attempt to bring an end to the passing off activity. If this doesn't work or the matter is more complicated, Ask a lawyer for advice.