New and updated passing off and trade mark guidance

January 2015

The term “brand” is a broad one. For many businesses the focus of their brand will be their name and/or logo. Indeed, the terms are often synonymous. A businesses brand, however, goes much further than that – encompassing its reputation and image, providing a focus for customer goodwill and, by extension, its commercial success.

A brand as a whole, therefore, represents a valuable business asset to businesses of all shapes and sizes, from the self-employed sole trader to the multinational corporation. In many cases trade marks, more specifically registered trade marks, will be used to protect business identity. For some businesses, however, and in particular SMEs, trade mark registration may be seen as costly, unnecessary, or perhaps even impossible. For small businesses, for example, choosing a business name based on a personal name and/or place is a popular choice and registering such names as trade marks will often be difficult. This does not mean, however, that they are without protection entirely.

Passing Off

The common law tort of passing off represents a valuable and useful tool for the protection of business names, logos, trade dress and get-up.

The action for passing off is based upon the principle that, “A man is not to sell his own goods under the pretence that they are the goods of another man”. This results in an action that can be very useful in preventing other businesses from taking unfair advantage of your good name and, particularly in light of modern extensions to the action, offers considerable protection for more than just goods. Passing off can now protect your name and your “get-up”, and can address misrepresentations relating not only to the origin of products or services but also to those concerning their quality and beyond to misrepresentations of association and licensing.

New Guidance Notes

Whether you are seeking to put a stop to another trader’s actions or to avoid mistakenly being found guilty of passing off yourself, the key is due diligence. It is vital to be aware of your market and your fellow traders. Not only does this help to ensure that you can catch would-be infringers early on, avoiding any significant harm, but it also just as importantly helps to ensure that you don’t end up on the receiving end of a passing off action yourself for, as our new guidance notes explain, a would-be defendant’s actions do not need to be deliberate.

New Passing Off Guidance Notes from Simply-Docs provide a description and explanation of the key aspects of the tort of passing off and are designed to provide businesses with a clearer idea of what to expect should they find themselves in a situation where another business is exploiting their goodwill or where they themselves are facing similar proceedings.

Updated Trade Mark Protection Guidance Notes

In addition to our new passing off guidance notes, our existing Trade Mark Enforcement Guidance Notes have been updated with new information on threats actions – actions which suspected infringers may take against accusers making unfounded threats of infringement proceedings.

The contents of this Newsletter are for reference purposes only and do not constitute legal advice. Independent legal advice should be sought in relation to any specific legal matter.

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