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If a business has been using an unregistered trade mark for ample time, and has established considerable goodwill in its goods or services, it may be able to stop another business from using the same name, logo or trade mark...

Passing off, a protective umbrella for unregistered trade marks

If a business has been using an unregistered trade mark for ample time, and has established considerable goodwill in its goods or services, it may be able to stop another business from using the same name, logo or trade mark...

A registered trade mark is the best way to protect the identity of your business’ goods or services and to prevent others from imitating your brand… It can be an indispensable marketing asset, integral to increasing your business’ value.

But what happens if your trade mark isn’t registered?

Is your brand protected?

In certain circumstances, the common law action of passing off offers a protective umbrella, used to enforce unregistered trade mark rights. For example, if a business has been using an unregistered trade mark for ample time, and has established considerable goodwill in its goods or services, it may be able to stop another business from using the same name, logo or trade mark whether the other business has registered it or not.

What is passing off?

Passing off takes place when a business incorrectly represents their goods or services as those of another business, or that their goods or services are associated or connected with those of another business. The law of passing off safeguards a business’ goodwill, preventing these types of misrepresentations.

The trade mark owner, i.e. the plaintiff, must satisfy three key elements to successfully establish an action of passing off:

  1. Goodwill;
  2. Misrepresentation; and
  3. Damage.

Goodwill

Firstly, the plaintiff needs to demonstrate that there is a commercial goodwill or reputation attributed to the goods or services in consumers’ minds. This must be created through an exclusive association with the identifying ‘get up’. Get up refers to the look and feel or external appearance of goods or services, together with any marks or other indicia used.

Misrepresentation

Secondly, the plaintiff needs to establish that the defendant’s misrepresentation resulted, or is likely to result, in consumers believing the goods or services offered are those offered by the plaintiff. Misrepresentation is essential to an action of passing off.

Damage

Finally, the plaintiff needs to prove damage or detriment to goodwill. It must be shown that the damage has, or is likely to have, transpired from an inaccurate belief stemming from the defendant’s misrepresentation that the goods or services offered are those of the plaintiff.

Remedies

If a plaintiff succeeds in establishing an action of passing off, the court may order remedies including granting an injunction against use of the trade mark and damages.

In conclusion…

Although it is possible for an action of passing off to protect an unregistered trade mark, successfully satisfying the elements of passing off can be burdensome for any business. What’s more, it can prove to be far more expensive in the long run. By registering a trade mark, you can circumvent such obstacles and save the headache and expense. If you haven’t read our article on why you should trade mark, check it out here.

If you have questions about your trade mark rights, or if you would like to chat about protecting your brand, drop us an email today.

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