Trade Mark Law in the UK
Trade mark and passing off are two varied concepts, which are often used simultaneously in common parlance. In UK, through the registration of a trade mark, the proprietor is able to attain exclusive rights for making use of the registered trade mark for the pertinent services or goods, which had been registered. Through the registration, the owner is given the right of stopping the other individuals from using a mark which is similar to the registered mark, and which could confuse a common user regarding the goods or services being the registered ones. There can be certain scenario where the owner can also get the right of stopping the other individuals from using a mark which not even similar to the registered mark. The owner of the mark can get certain rights, even when the mark is not registered. Where a trader uses a mark that attains goodwill, which is associated to a mark, the trader can get some protection in such cases. Goodwill is deemed as quality that causes a customer to go back to that specific trader, instead of resorting to another one. The trade mark owner can sue the other trader, where the mark is made use of, in such a manner, so that the public can be confused by creating a belief that the goods are the ones, which belong to the owner of such a mark.
Essentially, both the concepts, i.e. passing off and trade mark offer protection to the traders to stop the other person from making use of their logo, be it an unregistered or a registered one. This is done so that the trader is safeguarded and so that the consumers are not duped, whereby they end up getting the wrong product or service due to inapt behaviour by one person. Through the following parts, the elaboration of the laws pertaining to the two concepts has been done so as to understand the similarities and differences that the two concepts have. This would enable the readers to get clarity on the significance of the two concepts and on the change of position that they get when they opt for either one of these options.
Where one business has easily recognisable features or distinguishing features, the other business cannot take such steps, which end up looking like an attempt at passing off the business as if it is their own. Where this happens, there are ranges of remedies that can be selected by the original businessperson. At the same time, the other businessperson gets a range of defences that can be opted in case a claim is raised against them. The goodwill or the reputation of the business is something that is made use of while trying to give the identity to any business, or to its services or goods, which help in distinguishing the business from its competitors. Goodwill is deemed as the advantage or benefit that the firm gets due to its reputation, business connections, and good name. Goodwill is thus the attracting parameters, which brings in the customers. Through the use of passing off law, a business owner can stop the defendant by relying on their reputation and goodwill.
Protection from Unauthorised Use of Similar Marks
The first and foremost option or making a successful claim of passing off is relying on the goodwill of the business. There is a need to show that the business has acquired the required goodwill. For making a passing off claim, there is a need to show that the defendant has made use of the get-up, mark, or the name of the plaintiff or their business. Even though the claim of goodwill can be represented through colours, shapes, names, words, or get-up, the protection is offered to the business as a whole and not on the basis of the individual elements. Reference can be made to the case of Burberry’s v Cording (1900) 26 R.P.C. 69 to understand the passing off principle. The judges noted that several cases had been noted that depicted that people relied on this tactic. One side states that only the trade mark law is able to ensure that the monopoly rights are presented for using a name or a word. Conversely, the other side presents that that no one has the right of using any name or word, where the same represents his products as being that of another, so as to act as injury for such other. The injunction order granted in such cases is aimed at protecting the property and the right that is bestowed upon the name or word that associates with such property, and which would otherwise be injured.
Even though the length of time that is required for establishing goodwill is deemed as a matter of fact in all situations, there is no strict regarding the same. Here, it is crucial to note that a business, which has not undertaken any trade, would not be very likely in its ability to bring a passing off claim. In passing off claims, the grounds of making a claim have been extended over a period of time, which now includes the use by defendant of the marketing or branding techniques that the plaintiff makes use of in daily parlance. This covers the visual images or slogans used in the plaintiff of the advertisements. Weightage is not given to the notion that the wrongdoer did intend to pass on the good or services as the ones that were of the claimant, or that the person did so in a fraudulent, negligent or malicious manner. Innocence is thus not considered as a defence under the law for an action of passing off raised in this context.
To understand the context of goodwill, reliance can be placed on the definition of this word given in the case of Inland Revenue. Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at 223. Goodwill is deemed as a thing that can be easily described but it is a concept that is very difficult to define. It essentially denotes the advantage or the benefit that is attained by the business owing to its business connections, reputation and good name. It helps on differentiating an already established business from a business, which is newly started or is at its start. For a business, the goodwill emanates from a specific source or centre. Irrespective of the extension of diffusion of the influence that it has, the goodwill will stop meaning anything unless it has the power of attracting enough customers to the source from where it begins.
Goodwill and Passing Off Law
Further elaborations regarding goodwill were made in the case of Ewing v Buttercup Margarine Company, Limited [1917] 2 Ch. 1. In this case, the court stated that the plaintiff has put sufficient proof to show that the defendant had used their name in a manner that would lead the people to believe that this was the business of the plaintiff, which was being handled by the defendant. The conduct of the defendant was such that the belief was induced regarding the business being a branch of business of someone else, which essentially means that this someone else had to bear the loss of such representation, in varied manner. The kind of business done by the plaintiff, the quality that they serve, or the credit they enjoy, would all be at a disposal of the defendant due to such a representation. This would also be unfruitful for the ones who fall for such a misrepresentation. This is the reason why the passing off claim in this case was deemed successful.
Within the context of discussion on passing off cases, reference needs to be made to Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 as well. This case saw the contentions being made on the trader adopting words in common law, for their trade name, which meant that the risk of confusion was bound to take place. The court stated that even in such cases, it was crucial to show that the risk was running unless the first user was allowed to monopolise the words in an unfair manner. The acceptance of comparatively smaller differences was deemed sufficient by the court so as to avoid any confusion. A higher discrimination degree was fairly expected from public in such cases where the trade name covered part or whole words that were a description of the service being rendered or the product being sold.
Apart from goodwill, there is another context in, which passing off can be allowed as a remedy by court, and this is the case that involves misrepresentation. There is a need to show that the defendant has made a representation, which was deceptive, confusing, or was likely to deceive or confuse the people. Consideration is not given to the fact that the misrepresentation was true or that at the very same time it had the power or impact of confusing the public regarding the origin of services or goods of the defendant. Apart from this, there is no need for defendant making the presentation with the intent of confusing others. The innocence, as stated earlier, could not be taken as the act of passing off.
The misrepresentation has to be in context of the source of goods. The defendant, in a typical scenario, would present that their services or goods are that of the plaintiff. Such a misrepresentation could be in the form of express statement that has been shared by the defendant or could be implied by the defendant’s use of similar or same distinguishing marks with regards to the services of goods used by the plaintiff. The passing off can also take place in such cases where the defendant ends up representing good or services of another person in a wrongful manner, which essentially means that they take the credit of goods or services that originated from another person or entity.
Making a Successful Passing Off Claim
The confusion risk is dependent on the visual and phonetic similarities among the marks, the situation where the goods were sold or services were supplied, the nature of goods or services, the habit of ordinary purchaser, and the nature of the marketplace. It becomes difficult to establish the chances of confusion in such cases where the plaintiff adopts the ordinary descriptive for identifying the services or goods. There is a need for the plaintiff to show that the public has become associated with such words and links it to only the plaintiff and no one else. It is not that majority or all current or potential customers were confused.
In Star Industrial Ltd v Yap Kwee Kor [1975] FSR 256, the court stated that the remedy for passing off action could be given as remedy where there was an invasion of right of property and not of the name, mark or the get up used in an improper manner. There is a need to show that the business would likely be injured due to misrepresentation that took place due to the passing off of goods to another person, as their goods.
In Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873, the court stated that there was a need to establish reputation or business that the plaintiff had, and that there was a misrepresentation by the defendant, made to the public. Lastly, there was a need to show that the defendant suffered or was likely to suffer damage as a result of the erroneous belief that was posed by the misrepresentation undertaken by the defendant regarding the source of goods and services of the defendant as being that of the plaintiff. This means that apart from goodwill and representation, there is a need to show the presence of damage for the plaintiff, for a claim of passing off to be successful. The damage could be in form of damage to reputation, damage by association, erosion of goodwill, loss of opportunity, loss of sales, and loss of profit. The presence of passing off allows the plaintiff to claim an injunction, search and seizure order, damages and an order for destruction or delivery of infringed articles.
As stated at the beginning of this discussion, trade marks are granted to registered objects. In UK, the proprietor of the registered trade mark gets the exclusive rights of such mark that were infringed by the use of it done by someone else, without taking their proper consent. The proceedings related to trade mark infringement can be raised in context of marks that have been registered. The claim of passing off take a wider stance in comparison to the trade mark claims. This is because in trade mark, the mark has to be registered, while the passing off mark is not, which makes it wider in ambit. A claim of passing off in context of benchmarking it for establishing it are higher in comparison, when viewed from the evidential viewpoint. This is because it is easy to prove the three elements of goodwill, misrepresentation and damage. In trade mark infringement action, where one prohibited act has been committed, the defendant is made liable, unless the defendant can put forth a specified defence is applicable.
The Definition of Goodwill
In UK, the Trade Marks Act, 1994 governs the trade mark regime of the nation. This is based on EU trade mark law, covered under Directive (EU) 2015/2436. Such signs would be deemed as a trade mark as per section 1 of this act that are deemed as capable of being graphically represented that carries a capability of distinguished services of goods of one entity from another. The more recent amendments based on Directive (EU) 2015/2436 were integrated in UK laws through the Trade Marks Regulations 2018, SI 2018/825, which were introduced from 14 January 2019. Even though, post Brexit, UK is no longer subjected to the regulations or directives of EU, similar provisions still continue. The marks applied before this landmark event still continue to get protection.
Now that the two concepts are clear in the manner they are applied, there is a need to understand the manner in which these are different so that the relevant protection can be sought by the businesses. For centuries, the remedy for passing off has been present under the common law. As against this, the remedy for trade mark has been presented through statutory protection that is granted post registration of the mark. In a relative manner, it has not been present for a long time. Hence, the rules regarding the passing off are judges made, while the law regarding trade mark infringement is made by the relevant legislative body. This being said, the origin of statutory trade mark provisions does not indicate any degree of rigidity so far as the legislative instruments’ application is concerned. There is a constant interpretation of the statute by the court, and it can be stated that the statue is a broad framework for the functioning of judiciary, in context of finding the law.
A deeper understanding of these differences highlights the next point of differentiation, which is in context of the acquisition of rights in passing off and in trade mark. The rights that relate to passing off were established in a gradual manner, with the usage. Here, the key question was regarding the acquired reputation of a specific mark. Reputation establishment is dependent on a variety of factors that cover the degree of distinctiveness, the nature of mark, the sales figures, the period of usage, and the promotion expenses that have been incurred on the marketing of the products that had the get-up or mark. The protection that is offered through the legislation is one that becomes available on immediate basis with registration. The protection that is granted is not short term based or dependent on the usage of such mark. From this perspective, it could seem that by getting the statutory rights, it would expedite the manner the rights are obtained. However, this observation is not reflected in reality. This is based on the fact that the timeframe taken for registration, where the application could take up to a good span of 3-4 years. This means that the theoretical position is changed due to the factual position.
Ewing v Buttercup Margarine Company: Elaborations Regarding Goodwill
This is not all when it comes to difference between the two concepts. A further differentiation could be noted in the case of alleged passing off being deemed as that based on goodwill that has been built by making use of the protected mark. However, in context of the trade mark infringement, the right of mark is in itself protected. This means that the practical differentiating point in context of the remedies offered under the two concepts is the comparison of two marks in passing off is related to the use of the product or the context in which such a product is used. To put in it contextual terms, a product X would not get protection for being similar to product Y unless the same is in use. The use of addition of the distinctive material like shapes or colours is thus taken into determination by the courts to consider the chances of confusion. Conversely, in case of trade mark infringement, the comparison is drawn only on the basis of similarity of the two marks and any other matter is not taken into consideration. Thus, there is a more holistic approach adopted in passing off cases, and the trade mark law only considers registration aspect, irrespective of use of the mark by the respondent in a distinctive manner.
There is no need of establishing the use of a mark in context of similar or same goods in context of passing off. This requirement has been presented under section 34(1)(a) and 34(1)(b) of the act, but not for (c) of this sub-section, which is related to the use of famous marks with regards to any goods. Passing off does not need to show the possibility of confusion. As against this, where the registered mark is present in context of same goods, where registration has been attained, section 34(1)(a)requires to show only the similarity between the market. There is no need of showing that the confusion, in a certain sense, would result in an irrefutable presumption to this effect. In a similar manner, when a famous mark is infringed, example in matter of dilution, there is no need of showing any confusion. The main contention in cases of passing off is whether the use is going to affect the goodwill of the business in an adverse manner. In infringement cases, the right to goodwill is not present. There is also a need to mention that the remedy for passing off is present only for a specific geographical area where the reputation of the business existed. As against this, in case of trade mark, the remedy in form of protection, would be available in the entire country.
Conclusion
The previous discussion covered a detailed analysis of the concepts of passing off and trade mark in UK jurisdiction. The two concepts are similar and different from different view points. The main point of similarity between the two concepts is that it offers protection to the business or the proprietor for the mark or get up they use. This is in context of another business representing to be such former business, so as to take advantage of the product of the first business. This could intentional or unintentional. This is important not only to protect the business but also to protect the consumers, from otherwise they will be duped into buying something that they thought had originated from another business.
Despite the similarity in basic concept of the two terms, there are quite many differences between the two. The first and foremost is that passing off is a concept that was born a long back through common law. On the other hand, trade mark was born through statutory concept, which is still a novice in comparison. The former concept offers wider protection in comparison to the latter, as the former is not restricted by registration and can be imparted basis the three elements of goodwill, misrepresentation and damage. In context of passing off, there is a need to establish the use of the product, while this is not needed in trade mark. All in all, despite the differences between the two concepts, these are substantial in terms of offering necessary protection to the businesses from a misuse or misrepresentation.
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