A trademark has the potential of being the most valuable business asset. This is a branding investment into the future of your business. A trademark is worth protecting by registration. A registered trademark protects brand and is more valuable than a business name or a domain name. By registering a trademark, a person has the exclusive legal right to use his brand on his goods and services. A trademark registration alerts other traders of intellectual property rights inherent with the trademark. It also deters others from choosing the same or similar trademark. Trademarks, like other assets, can be licensed or sold. A trademark should be something other traders would not use in the normal course of their trade. It is important to understand the limitations around the types of words that can be trademarked before deciding on a trademark.
Passing off applies to protect unregistered rights associated with a business, its goods, or services. The principle underlying the tort of passing off is that “A business is not allowed to sell its own goods under the pretence that they are the goods of another but a popular business” (Perry v Truefitt (1842).
Passing off actions can be brought into a wide range of scenarios. It could be brought to protect business names and features of “get-up” or “trade dress”. The key issue is the danger of misrepresentation as to the origin of goods or services. If a business leads consumer to believe that their goods or services relate to another business when indeed there is no such relationship nor business arrangement, it creates grounds for being sued based on business misrepresenting for passing off.
Challenge with Passing off is it is often not easy to demonstrate that misrepresentation has been made, making it difficult to prove. Therefore, claimants need to substantiate their claims by evidencing that public are indeed at risk of confusion between the two businesses.
Trademark infringement is the unauthorised use of a trademark or trademark with close resemblance in a way that is likely to cause confusion, deception, or errors about the source of the goods and/or services.
If you have a trademark registration, you can act against anyone who infringes your trademark to stop them from using your trademark. If you do not have a trademark registration, you may still be able to take action but you will need to rely on fair trading legislation or the common law action of passing off, which may be more challenging to demonstrate.