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: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;
and 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.