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.
Passing-off is intended 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 service.
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).
Examples of Passing-Off
Assessing what may be infringement of an unregistered mark can be difficult. There is no statutory statement and previous Court decisions must be reviewed and assessed to define the situations in which a passing-off action has been successful in the past and whether that precedent will assist in your particular case.
By way of example, passing-off has been successfully used in the following situations:
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.