Protection given by an Unregistered Trade Mark
Even where a mark is not registered or registerable, protection of goodwill in a product, service or business and protection of the public from deception is possible by means of a passing-off action (i.e a legal action to prevent infringement of an unregistered trade mark).
The purpose of such a passing-off action is to prevent another trader cashing-in on your goodwill and reputation and, unlike registered marks, need not be limited to those marks which distinguish goods and services.
You must be able to demonstrate that the name, mark, get-up or other factor is distinctive and is associated with your business, product or service in the minds of customers. You must further demonstrate that customers were misled to the detriment of your business (whether or not the other trader intended to cause the confusion).
Assessing what may be passing off can be difficult. There is no statutory definition of it, and so you will need to review and assess case law on passing off. That will enable you to see the situations in which passing-off actions have been successful in the past and to assess whether such case law precedents are likely to assist you to argue that passing off has occurred in your particular case.
By way of example, passing-off has been successfully used in the following situations:
- wrongly selling substandard, recycled and modified goods;
- wrongly supplying substitute goods in place of those requested;
- wrongly associating goods or services with those of the original trader;
- wrongly creating the impression that goods or services originated from another business or that goods were from a particular source;
- wrongly giving the impression that one business is part of, or associated with, another;
- wrongly suggesting that one business is somehow licensing or authorising another business;
- wrongly claiming that something in fact designed, produced etc. by one business was designed, produced etc. by another;
- one business wrongly claiming that their goods shared the same origin or quality standards as those of another.
Each case will be looked at on its own merit. However, where both businesses operate in the same field of activity and sell to similar markets, then the chance of a successful action is higher.