Protecting unregistered trade marks

Unregistered trade marks can only be protected by the common law tort of passing off. This is where someone else uses your mark or represents the goods or services as their own.

How do I protect my unregistered trade mark?

Section 5(4)(a) of the Trade Marks Act 1994 prevents the registration of a mark by virtue of passing off.

You or your company must prove, through factual evidence, that

• you have an established trade mark that has acquired a reputation and/or goodwill in the mind of the relevant public;
• the offending trade mark has been, or is likely to be, confused with your established trade mark; and
• your business under your established trade mark has been, or is likely to be, "damaged” by use of the offending trade mark.

Damage must be in the form of lost business or revenue.

Can I expect any compensation?

Whilst the concept of tort refers to a person obtaining compensation from the person who causes you injury, we cannot provide a judgment that gives you any financial compensation.

If the proceedings before us are successful, the compensation is that the offending trade mark will not be registered or is removed from our register.