If you have not registered your mark you will have to look to the common law for protection and must rely on a passing off action to prevent infringement of your mark.

Passing off actions are time-consuming and expensive. To succeed in such an action, you must produce evidence of ownership of goodwill or reputation in the mark, and evidence that the unauthorised use of his mark amounts to a misrepresentation which is causing, or is likely to cause, damage.

Protection of a new, unregistered brand name or mark may be impossible since it may not have attracted sufficient goodwill to support an action for passing off. Gathering evidence to demonstrate that there is a misrepresentation, usually in the form of evidence of confusion (or a likelihood of confusion), is labour intensive and costly, particularly where survey evidence is the only means of showing that there is confusion and market research companies and experts are involved.

An action for passing off is of most use where there is no infringement of a registered trade mark. For example, the makers of ‘Penguin’ chocolate biscuits were able, by means of a passing off action, to prevent the supermarket chain Asda from marketing its own brand of biscuits in packaging deceptively similar to that used for ‘Penguin’ biscuits.

By contrast, claims in this action for infringement of registered trade marks (such as a claim that the word mark PENGUIN was infringed by Asda’s choice of ‘Puffin’ as its brand name and a claim that Asda’s puffin bird device infringed registrations of penguin devices) failed. Further, there is provision in the TMA for the owner of an unregistered mark who would be entitled to restrain use of another’s mark by way of an action in passing off to prevent another trader from obtaining a trade mark registration for that mark.

 By Jane Coyle

Jane can be contacted at: jane@trademarkroom.com