In the UK, trade marks are protected in two basic ways.
Passing off – common law protection
If your trade mark isn't registered, a level of protection exists under the common law of 'passing off'. Passing off is when someone deliberately or unintentionally represents their goods or services as yours by adopting the same or a similar trade mark.
However, to have a remedy in passing off you have to prove that:
- you own 'goodwill' in the business conducted under the trade mark, ie that the public associates your trade mark with your product or service
- the other person's goods or services have been mistaken for your own, thereby damaging your business
This can be hard to prove and passing off actions can be expensive. If you are successful, you can have an injunction served on the person passing off and be awarded damages and costs.
Infringement – statutory protection
Under the trade mark legislation, UK trade marks can be protected by registration.
You have an automatic right to sue for infringement if anybody uses without authorisation your registered trade mark - or one similar to it - for the goods and services for which you registered it. There's no need to prove that the public associates your trade mark with your product or service, or that someone else's goods or services have been mistaken for your own. A court can make a restraining order to stop the infringement and you can be awarded damages and costs.
HM Revenue & Customs can also act for UK businesses who suspect their intellectual property rights are being abused by counterfeit imported goods.
If you'd like to protect your trade mark under the law, check how to register a trade mark.
Objecting to trade marks
Trade marks that are similar to, or the same as, an earlier trade mark can still be registered (known as relative grounds for refusal), providing that the holder of the original trade mark does not object to the registration.
The responsibility for enforcing your own IP rights rests with you.
If someone tries to register a trade mark that is similar to, or the same as your own trade mark, you must decide what action you want to take – either oppose, object or consent to the new registration. You may also be able to apply for invalidation or revocation of a registered trade mark that you are using if the mark has been registered in bad faith. If in these situations, you should seek legal advice.
Protecting your trade mark abroad
Trade mark registration within the UK does not automatically protect your mark overseas. You may need to apply for an international registration via the Madrid protocol or for EU-wide protection via a European Union Trade Mark. Read more about these and find out how to register a trade mark outside the UK.