Both the law of passing off and registered trade mark law protect trade marks in the UK, but:
- they do so in different ways
- passing off has a far wider application to unlawful conduct than registered trademark protection.
Here are some of the differences...
Registered Trade Marks
In registered trade mark law, trade marks:
- must be registered for protection.
It requires a formal application procedure, and approval of the application for registration. An application does not guarantee registration.
- are registered in respect of defined classes of goods and services.
Protection of trade marks is limited to preventing competing businesses using:
- similar trade marks in respect of
- similar goods or services.
That is, unless the trade mark is a household and/or famous name, such as L’Oréal, Hilfiger, Cartier.
Infringement of trade marks when used they are used unlawfully: without the licence of the trade mark owner.
In trade mark infringement cases, the only relevant confusion is between:
- the claimant’s trade mark as it appears on the relevant Register of Trade Marks - ie in its registered form, when compared to
- the trade mark used by the competitor.
Law of Passing Off
In contrast, depending on the facts of the case, the law of passing off:
- doesn’t require registration.
It applies automatically in circumstances which qualify for protection: accumulation of goodwill.
The business doesn’t need to own a registered trade mark.
- can prevent sales activity outside UK
It applies to pre-sales activity and damage suffered by a business within the UK, by businesses operating outside the UK.
- protects goodwill of businesses.
Goodwill is generated primarily by sales of products, whether in conjunction with a trade mark or trade name, or not.
It's wide protection: it prevents misdescriptions of the goods or services, as well as unauthorised use of the claimant's business name, trade dress or other indication:
- that they the competing are somehow connected to the business, where
- the statement or misrepresentation causes damage or is likely to cause damage.
- doesn’t necessarily require "similarity": unlike registered trademark law, no visual, aural or conceptual similarity is necessarily required between:
- the trade mark used by the protected business
- the goods or services sold by the competitor.
- can attach to the supply chain: A passing off claim can climb up the supply chain to reach:
- manufacturers, importers and exporters
- suppliers contributing to the supply chain in foreign countries,
which don’t use any trade mark.
It’s also not limited to the business which makes the sale to the end buyer or consumer.
When a passing off claim is successful, it’s known as “passing off”.
There is no “infringement” in the law of passing off. That term is reserved for registered trade mark law.
See more about the law of passing off.