Getting a Trademark – Do You Always Have to Register?
Unregistered Trademarks and Passing Off
Many businesses fail to register their trademarks, either due to an oversight, or on cost grounds. However, even if you have not registered your trade mark you may still be able to take action against another party who uses your mark without your permission by means of the common law of passing off. Passing Off is not governed by any statute but has developed through case law over many years.
Passing off can occur by somebody adopting the same or similar trademark as yours, by adopting the same or similar packaging or appearance as that of your product, or by implying to the public that their goods or services are in some way connected with yours when they are not.
In order to bring a claim for passing off several things must be proved, namely:
– that the goods or services sold under your trade mark must have acquired goodwill or a reputation in the market;
– that there has been a misrepresentation by the other party (whether or not intentional) leading, or likely to lead, the public to believe that its goods or services are actually yours; and
– that you have suffered, or are likely to suffer, some damage as a result of the false belief caused by the other party’s misrepresentation. This usually means establishing actual or likely financial loss, and could include loss of profit in an existing market, loss of reputation or loss of opportunity to expand.
Passing off can only protect trade marks that are actually being used and have acquired a reputation. Due to the things that must be proved in order to establish the claim, it is often very difficult, and as a result, expensive to prove a passing off action. Passing off, if established, can be the subject of injunctions awarded by the courts and the party guilty of passing off can be ordered to pay damages and costs. It is much easier and cheaper to bring infringement proceedings if the trademark has been registered. Trademark registration will also provide broader protection, enabling you to take action in many circumstances that are not covered by passing off.
If you suspect that a competitor is passing off their products or services as yours, it is important that you seek advice immediately. The longer you delay, the more difficult it can be to remedy. But the best way for a business to protect itself is to ensure that all their trademarks have been registered.