Trademarks and passing off

It's crucial for a business to protect its brand and trademarks; this Quick Guide explains some of the issues.

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 trademark 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 trademarks last for 10 years but can be renewed for further 10 year periods.

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

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

Ownership of a trademark can be transferred at any time in the application process or after registration.

If a third party uses one of your unregistered trademarks 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.