Unregistered Trade Marks

What is a trade mark?

A trade mark is a sign or logo, design, or even a word phrase, that distinguishes the goods or services of a business from those of its competitors. You can stop someone using the same, or a similar, trade mark whether or not it is formally registered. However, if the trade mark has been registered, it is easier to win a claim for trade mark infringement than if it is not.

Under UK law, a trade mark can be registered with the UK trademark and Intellectual Property Office (IPO). This provides legal protection in the UK for that mark against any other company or person using that trade mark, as registration essentially guarantees the identity of the origin of the goods or services without possibility of confusion to consumers.

Can all trade marks be registered?

The IPO will refuse to consider trade marks that are not deemed capable of functioning as a mark; those that are not sufficiently distinctive; those that are similar to existing trade marks; or marks that have become customary in your line of business.

In addition, trade marks which are offensive, illegal or deceptive will be refused.

The IPO may accept made up words as trade marks, but it may not accept misspelled words such as ‘fone’ instead of telephone. It might also not accept words with .com or .co.uk or similar.

Should I register my company name as a trade mark?

An individual business should always register its trade mark name as a trade mark if it is serious about getting the best protection against infringers. However, registration is by no means automatically granted by the IPO.

If a business does not formally register its trade mark, then it may be exposed to the potential misuse by another business of its trade mark, whether that is the company name, logo, strapline, or design. There is limited common law protection (‘passing off’), but it is relatively difficult to succeed in a passing off claim. Formal registration of your mark is, therefore, imperative.

What protection does the law provide for unregistered trade marks?

Your trade mark does not have to be registered (and in some cases, an application may be refused), but you can still take steps to stop someone from infringing your unregistered trade mark. The trade mark owner can take formal legal action if someone else uses their mark without their permission. This is done through a passing off action.

Passing off claims

How do you prove ‘passing off’?

To be successful in a claim for passing off, you must prove:

  • That the mark is yours
  • That you have built up a reputation in the mark, and
  • That your goodwill or reputation has been harmed in some way by the other person using your mark

If I can make a passing off, does this mean I don’t need to register my mark?

Although you can make a claim for passing off for your unregistered trade mark, it can be difficult and potentially expensive to prove. In many cases, a huge amount of evidence is required to demonstrate each of the three elements required to bring a successful claim.

So if your trade mark is registered, it will be much easier and quicker to take legal action against an infringer than relying on a passing off claim.

Is there anything I should be aware of when deciding to register my company name as a trade mark?

There is greater potential for infringement or misuse of company names in particular, because of the nature of internet domain names. As mentioned above, the IPO may well not accept trade mark applications containing .com or .co.uk (and similar), but the business name itself can be registered.

The reality is that many individuals buy internet domain names containing the name of a specific company with the aim of selling it to that company to make a significant profit. This practice is known as cyber-squatting – registering and using domain names in bad faith.

Can I do anything to stop cyber-squatting?

At present, there are no specific anti cyber-squatting laws in the UK. However, it is possible to take action using fraud laws or for trade mark infringement (or passing off if the mark is unregistered).

There are also domain name resolution processes which can resolve such disputes more quickly and cost effectively than court action. In most cases, the rights holder (the person who has the intellectual property in the name) will succeed in a claim against the cyber squatter.