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Trade marks and passing off

Branding gives a business’ products value, so it's crucial that businesses protect their trade marks. This guide explains how trade marks can be protected.

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

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

Trade marks can even be sounds or smells or colours, 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, capable of distinguishing goods and services, and not offensive or misleading (or otherwise excluded from registration), you can apply for it to be registered in the UK, EU, or internationally.

Registration

It can be easier to protect your trade mark if it’s registered. 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.

If a third party uses your registered trade mark, you can make a legal claim against them for trade mark infringement. If your claim is successful, you may be awarded damages (compensation); a legal order restraining the third party who used your trade mark from doing so again; and/or other remedies.

Both individuals and businesses can register trade marks. The entity registering the trade mark will be the one who owns 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

Both UK and EU registered trade marks last for 10 years, but they can be renewed indefinitely for further 10 year periods.

For more information, read How to register a trade mark and Registering a trade mark in the EU.

Ownership of a trade mark can be transferred at any time during the application process or after registration. You can also give another party a licence to use a trade mark that you own.

If you do not register your trade mark and a third party uses your (unregistered) trade mark, you cannot make a claim against them for trade mark infringement. You can bring an action against them for 'passing off’ if you can show all of the below:

  • your business has a reputation and goodwill in the mark (ie the mark’s good name is associated with your customers choosing to buy from you)

  • others have confused (or are likely to confuse) the third party’s brand for yours due to the third party making a misrepresentation (eg if they gave consumers the impression that their products were yours), and

  • your business has been harmed (or is likely to be harmed) as a result

It is often more difficult to make a successful claim for passing off than for trade mark infringement.

Before initiating a claim for passing off, you can consider using a Cease and desist letter to ask the third party to stop using your trade mark, to attempt to bring an end to the passing off activity. If this doesn't work, or if the matter is more complicated, Ask a lawyer for advice.

If your passing off claim is successful, you may be granted similar remedies to those available for a trade mark infringement claim, including damages or an order preventing continued use of the trade mark by the third party.