Passing off: definition, remedies and defences
In this guide:
- Trade marks
- What is a trade mark?
- Selecting a strong trade mark
- How to search for trade marks
- How to register a trade mark
- Register a trade mark in the UK
- Register a trade mark outside the UK
- Benefits of trade mark registration
- How to make money from trade marks
- Protecting registered trade marks
- Passing off: definition, remedies and defences
What is a trade mark?
What can be registered as a trade mark in the UK and the difference between acceptable and unacceptable trade marks
A trade mark is a sign which can distinguish a product or service of one business from those of others.
What can you register as a trade mark in the UK?
In the UK, trade marks can be:
- words, including personal names, phrases or slogans
- designs, such as logos, symbols or signs
- sounds or jingles
- gestures or movement
- multimedia, comprising both movement and sound
- colours
- brand names, domain names and company names
- smells
- the shape of goods or their packaging
- a combination of any of the above
It's important to note that registering a company name doesn't automatically give you trade mark protection. You should register your company name as a trade mark to secure exclusive rights to its use.
Acceptable trade marks
It is not possible to register all kinds of marks. To be accepted, a trade mark must be:
- distinctive for the goods and services for which you wish to register it
- sufficiently different from other registered trade marks in the same or similar class
Before 14 January 2019, marks also had to be capable of graphical representation, eg being written down. From 14 January 2019, applicants no longer have to represent their mark visually. Marks, however, must still be:
- capable of distinguishing goods or services of one business from another
- represented in a way that determines clearly and precisely what is being protected
Unacceptable trade marks
You cannot register as trade marks those marks that:
- are offensive or against the law
- describe the goods or services it will relate to, eg 'quality paint'
- are misleading or deceptive
- are a 3-dimensional shape associated with the mark
- are customary in your line of trade, too common or non-distinctive
- look too similar to state symbols like flags, emblems or hallmarks
Find more examples of .
Trade marks are a valuable piece of intellectual property and can play an important role in your marketing and branding activities. Discover the benefits of trade mark registration.
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Selecting a strong trade mark
How to choose a strong, distinctive trade mark for your product or services - key considerations and mistakes to avoid
Choosing a mark that will function as a trade mark is extremely important for any business.
What makes a strong trade mark?
While there are no fixed rules on what makes a successful trade mark, here are some things which you will need to consider to make sure you choose a good mark.
Make it memorable
Avoid generic, descriptive and suggestive marks and choose memorable and distinctive words. For example, arbitrary marks (such as Apple for a computer) and coined words (such as Google) are more likely to be considered distinct. The stronger and more distinctive the mark is, the easier it can be to register and protect it.
Make sure you can register it
Your mark will need to meet certain requirements in order to be eligible for registration. To begin with, it has to be unique and sufficiently distinctive for the category of goods and services you wish to use it for. See what is a trade mark.
Select the right class/classes
Consider which class or classes you wish to protect your goods and services in. The UK is divided between classes 1 to 34 (goods) and classes 35 to 45 (services). You can register a trade mark under multiple classes.
Carry out a trade mark search
A trade mark search will help you determine if the mark you intend to use is available in the UK or in other markets. If you come across a mark that has expired or does not appear to be in use, you will want to proceed with caution - it is possible to restore marks in certain circumstances. See how to search for trade marks.
If you find a same or similar mark already in use, you may want to consider licensing or acquisition. In some cases, you may be able to file for revocation, cancellation or invalidation of an earlier mark. Read about objecting to and challenging trade marks.
Consider other markets
Think about how your mark will be perceived not only in your domestic market, but in overseas markets also. This is essential if you export or plan to export your goods and services abroad. Find out how to register a trade mark outside the UK.
Consider other assets, eg domain names and social media
Trade mark registration doesn't automatically give you the right to a matching business name or domain name or social media handle. These are separate assets and you may need to buy or manage them separately. Read about domain name and trade mark conflicts.
Seek advice early
Trade mark registration can be complex. If in doubt, you may wish to .
Businesses in Northern Ireland may also get intellectual property advice from Invest Northern Ireland's business advisers. Get .
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How to search for trade marks
Carry out a trade mark clearance search to check the availability of a mark, or discover marks that are already in use
If you're thinking of trade marking your goods or services, you should first carry out a trade mark clearance search. This will allow you to see if any mark has already been registered or applied for that is similar or identical to yours, or is being used in the same class (or classes) for competing products or services.
Carry out a trade mark search
Searching for trade marks involves checking online registers and trade mark databases to ensure that no earlier marks exist and that you won't infringe on already registered rights.
You can carry out the search yourself, if you wish, using the UK Intellectual Property Office's (IPO) free tool to .
A UK search will disclose both registered trade marks and pending trade marks registrations where the application process is underway.
If you wish to widen your search to other territories, you can use the EUIPO's tools to .
Expert clearance searches
If you don't want to carry out the searches yourself, you can:
- to conduct a search for you
- get help from
When carrying out a search, don't focus solely on registered trade marks. A similar unregistered mark may already be in use and its owner may be able to protect it against passing off under common law rights.
When should you carry out the clearance search?
You should search for previously registered trade marks as soon as you decide what mark you wish to use as your trade mark. At the very least, you should carry out a clearance search before you:
- create a new product or business name or logo
- move your existing goods or services into new sectors or geographic markets
- apply to register a mark as your new trade mark
Notification of earlier rights in search reports
When you file a trade mark application with the IPO, they will notify you about earlier marks which potentially conflict with yours. This notification will not include trade marks which have expired. Expired marks can be renewed or restored up to 12 months after their renewal date.
Should you attempt to register a mark identical or similar to a recently expired mark, the owners of an earlier mark may seek to stop you from using the mark. Omitting to carry out a detailed clearance search may therefore put you at significant financial and legal risk. Read about using other people's trade marks.
What to do if a trade mark is taken?
If your search discovers a mark that conflicts with yours, you should check its status.
If the trade mark is in force and being used, you could seek permission from the existing owner to agree to your registration. If they agree, they should provide you with a letter of consent to submit to the IPO alongside your application. If they don't agree, they may choose to oppose your application.
If the mark is in force but hasn't been used in the last five years, you may be able to request the mark's removal. The owner of the earlier mark may choose to oppose this. Opposition is one of the ways it is possible to object to and challenge trade marks.
Seek professional advice if someone is opposing your trade mark registration.
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How to register a trade mark
An overview of the UK trade mark registration process - how to apply, how much it costs and what to expect when you apply
In the UK, trade marks are registered through the Intellectual Property Office (IPO). You can apply to register your trade mark online or fill in paper forms. If you apply online, you may be able to avail of a discount if you pay the fee at the time of filing.
Apply to register a trade mark
You should follow several important steps when applying for trade mark registration:
- Step 1: Choose your mark carefully and make sure that your brand qualifies as trade mark. You can't change the details after you submit your application and the fees are non-refundable. Find tips on selecting a strong trade mark.
- Step 2: Carry out a trade mark search to check that your mark is free to use and register. A clearance search will help you avoid infringing earlier rights if your intended mark is already in use. See how to search for trade marks.
- Step 3: In your application, you must specify under which trade mark class or classes you want your goods or services to be registered. Make sure that you list all the goods and services you want your trade mark to cover, as you can't add any later. See and use the IPO's to help you search for, and classify, goods and/or services.
- Step 4: Consider the jurisdiction you wish to register your trade mark in. UK registration will give you rights to protection in the UK only. If you plan to export, consider registering a trade mark outside the UK.
After you file your application, the registration process typically involves the IPO examining your application, the publication of your application in the and the registration of your mark on the trade mark database.
How long does it take to register a trade mark in the UK?
In a straightforward case, if the examiner doesn't raise any objections and nobody opposes your application, the registration usually takes around four months from the application date.
To help you understand the process of applying for a trade mark, the IPO has published a . This gives you an indication of your responsibilities and tells you what happens once you submit your application to the IPO. Different processes exist for registering EU and international trade marks.
How much does it cost to register a trade mark in the UK?
It costs from £170 to register a trade mark online and £200 to register by post - this is for registering a trade mark in the UK in one class of goods and services only.
Each additional class costs £50, so the more classes covered, the higher the cost of filing is. You must file a fee sheet with your application and payment. Find .
You can use the IPO's Right Start service if you want to check that your application meets the rules for registration. You initially pay £100, plus £50 for each additional class. You then get a report telling you if your application meets the rules. If you want to continue with your application, you have to pay the full fee within 28 days of getting your report. You can also choose to continue your application even if it does not meet the rules for registration.
How long does a trade mark last in the UK?
A UK trade mark registration lasts for ten years, after which you can renew it, provided that you pay your renewal fees on time.
If you need advice or help with applying to register a trade mark, speak to or .
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Register a trade mark in the UK
Apply to the Intellectual Property Office to register your trade mark in the UK
You can register your trade mark with the Intellectual Property Office (IPO) online or by post. Before you apply for registration, you should:
- check that your chosen mark qualifies as trade mark - see what is a trade mark
- choose the right mark to protect - see tips on selecting a strong trade mark
- find out if the mark is free to use - see how to search for trade marks
- understand the trade mark registration process - see how to register a trade mark
Apply for a UK trade mark
To complete your application for trade mark registration, you will need to provide the IPO with:
- your name and address details
- details of what you want to register (eg a word, illustration or slogan)
- the classes you want to register your trade mark in - see trade marks
You will also need an email address and a credit or debit card to pay for the fees.
Trade mark application fees vary according to the examination option you choose when you apply - this can be either the standard or the Right Start application service.
Fees are non-refundable and don't guarantee registration of your trade mark.
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Register a trade mark outside the UK
How to register a trade mark in Europe and internationally by applying for EU trade mark registration or applying under the WIPO's Madrid protocol
Registered trade marks are territorial. If you apply for a trade mark in the UK, you'll only have protection in the UK. If you're considering exporting your services or goods overseas, you may want to register your trade mark in other countries.
National trade mark application
You can apply directly to Industrial or Intellectual Property Offices (IPOs) of individual countries to secure trade marks in their jurisdiction. In this case:
- you may need to translate each application into the national language
- you will need to pay the national application fees
- you may need to work with an IP agent or attorney to make sure that the application meets national requirements
Find .
Regional EU trade mark application
If you do business or plan to do business, in more than one European country, you should consider applying for an EU trade mark (EUTM).
The EUTM creates a unified trade mark registration system in Europe through which a single registration provides protection in all current and future member states of the EU. EUTM application costs from €850 and:
- you can file an application in just one language to cover all the EU countries
- you can renew your EU trade mark indefinitely every ten years
You can with the EU IPO.
From 1 January 2021, EU trade marks are no longer valid in the UK. Previously registered EUTMs have been replaced by comparable UK trade mark registrations. See guidance on EU trade mark protection and comparable UK trade marks.
International trade mark protection
An international trade mark application is possible under the Madrid system, which is managed by the World Intellectual Property Organization (WIPO) in Geneva.
What is the Madrid protocol?
The Madrid system provides a cost-effective and efficient way for trade mark owners to protect their marks simultaneously in the countries that have ratified the protocol. The system allows you to file one trade mark application:
- with a single office (in a national or regional trade mark office)
- in one language
- with one set of fees and in one currency
- without requiring a local agent to act on your behalf in the designated countries
The Madrid protocol also allows you to modify, renew or expand your global trade mark portfolio through one centralised system.
Using the Madrid system
If you apply under the Madrid protocol, your trade mark application will be examined according to the rules of the designated country. If accepted, your trade mark will gain the same protection in that country as if it was registered directly with the country's trade mark authority.
Your trade mark will last for ten years, after which you can renew indefinitely (provided that you ). The cost of an international trade mark registration will depend on where you want to protect your mark and how many classes of goods and services your registration will cover.
You can with the WIPO.
From 1 January 2021, international trade mark registrations designating the EU are no longer valid in the UK. These rights have been automatically replaced by comparable UK rights. Read about the changes to international trade mark registrations.
Registering trade marks overseas can be complicated and it's a good idea to get help from a qualified trade mark attorney or patent attorney. .
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Benefits of trade mark registration
Discover the advantages of registering a trade mark, and how registration helps to protect your business' profits, brand and reputation
There are many advantages to registering a trade mark. A trade mark can be your most valuable marketing tool and can help you to:
- position your products or services in the marketplace
- protect your business identity
- safeguard your reputation
Typically, the more successful your business becomes, the more valuable your trade mark is likely to be. Read about the importance of assets in business.
Do you need to register a trade mark?
You do not have to register a trade mark to use it. You can use an unregistered mark to promote your goods and service. However, if you do not register your trade mark, other businesses may be able to use it, or register it and prevent you from using it later.
Why register for a trade mark?
Registering your trade mark can help you get exclusive rights to use, licence, franchise or sell your mark. It can also help you to:
- prevent others from using the same or similar mark
- prove your legal rights for use of the mark and allow you to use the ® symbol
- avoid reliance on common law rights which can be difficult to defend
A registered UK trade mark may also help you to:
- obtain trade mark registration in other countries
- prevent the importation of counterfeit foreign goods
Find out how to make money from trade marks and protect registered trade marks.
If you choose to use an unregistered trade mark, make sure that you're not using someone else's mark and infringing their rights. If you use someone else's unregistered mark, they may take passing off action against you.
You can search for existing trade marks to check that you are not infringing on anyone's rights. Find out how to search for trade marks.
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How to make money from trade marks
Different ways to monetise your trade marks include licensing, transferring or mortgaging your marks, or using them to promote your business
Trade marks, like other types of intellectual property (IP), are business assets. As such, they may have significant monetary value if you choose to sell or license them.
How to license your trade mark?
A licence gives someone the permission to use a trade mark belonging to someone else. It is a common way of monetising trade marks in the UK. A licence can be:
- exclusive - where the licensee has exclusive rights to exploit the trade mark
- non-exclusive - where more than one licensee can exploit the same mark
The terms of a trade mark licensing agreement can include:
- the amount paid for using the mark
- the duration of the licence
- the business sectors or products to which applies, etc
The trade mark owner and the licensee should negotiate the terms and agree them, preferably in a written contract.
Upon agreement, you must tell the Intellectual Property Office (IPO) about the licence, using the , and keep them informed if the licence agreement ends, or any of the details change.
How to transfer a trade mark?
Since trade marks are property, you can sell or transfer them to another party as you would any other business assets. In legal terms, this is known as transfer of ownership or trade mark assignment.
There are a few situations where you might want to transfer a trade mark. For example, you may want to sell your trade mark:
- if you sell or close your business
- if you split off a product line
- if you are not able to use or utilise it
You may want to buy a trade mark:
- if you buy a new business or a part of a business
- if you merge your business with another
You can transfer ownership of a trade mark fully or partially. Make sure that you negotiate the terms of the transfer carefully and create a legally binding assignment agreement. If you take ownership of a trade mark through sale or company merger, you must .
Before considering any kind of sale or licensing arrangement, you should seek out qualified advice from professionals experienced in trade mark law. An accountant may be able to carry out a business asset valuation to help determine how much your trade mark may be worth.
Use trade mark as collateral
Another way of using your trade mark is as security for a loan. The lender retains a legal right in your trade mark until you repay the loan, but allows you to use the mark in the meantime.
If you use your trade mark as loan collateral, you must tell the IPO. They will record the security interest against your registered mark. When you repay the loan, they will remove the details from the register. See .
Trade mark revocation and invalidation
Keep in mind that you must use your trade marks in order to maintain their validity and their ability to make you money. If you do not use your trade marks, they could potentially be revoked and you may not be able to sell or transfer them. Read about .
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Protecting registered trade marks
How to protect you registered trade marks against misuse, counterfeiting and other infringement
Registering a trade mark doesn't guarantee you that your mark will never be infringed. However, it does give you exclusive rights to use the mark and to prevent its unauthorised use on goods and services that are identical or similar to yours.
Use trade mark symbols to claim your rights
When you register a trade mark in the UK, you can use the ® symbol to indicate that you own the mark. For unregistered trade marks, you may use the abbreviation TM.
The use of these symbols has no legal significance, other than showing to the public that you claim the trade mark rights. This may help deter others from using the mark without your consent.
How to deal with conflicting trade marks?
If someone tries to register a trade mark that is identical or similar to yours, you can oppose, object or consent to the registration. The right course of action will depend on your specific circumstances. See objecting to and challenging trade marks.
If you wish to use a trade mark, but find that someone had already registered it in bad faith, or hasn't used it in the course of trade, you may apply for or .
What constitutes trade mark infringement in the UK?
Unauthorised use of a registered trade mark (or a confusingly similar sign) on competing or related goods or services may constitute trade mark infringement.
For infringement to occur, the use of the mark has to be:
- without consent of the registered mark owner
- in the course of trade, ie with a view to profit financially
- in the territory where the trade mark right is registered
Infringing acts may include (among others):
- affixing the trade mark to goods or their packaging
- offering goods for sale or supplying services under the trade mark
- importing or exporting goods under the trade mark
- using the trade mark on promotional material or in advertising
- preparing to counterfeit your goods (eg use your mark on packaging, labels, etc prior to making counterfeits)
- using a company name that conflicts with your trade mark
Marks of confusing similarity
A mark doesn't need to be identical to one already in use to infringe upon the owner's rights. A confusingly similar mark may infringe registered rights if it:
- has caused or is likely to cause confusion, or mislead customers into believing that the goods and services originated from the registered trade mark owner
- damages or takes unfair advantage of the significant reputation of the registered mark (even if it's used on dissimilar goods and services)
Dealing with trade mark infringement
In order to take action against infringement, you must typically be able to prove that you own the trade mark right and that the infringing conduct is illegal. There are many options for dealing with trade mark violation, including:
- sending the alleged infringer a 'cease and desist' letter
- reaching licensing or coexistence agreements
- mediation, arbitration or settlement out of court
- applying for injunctions
- suing for damages or lost reputation and profits
Read more on defending trade marks against infringement. For defending unregistered trade marks, see passing off: definition, remedies and defences.
If you are concerned that someone is infringing your trade mark rights, you should seek prompt legal advice from a trade mark attorney or an experienced IP professional. Find a .
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Passing off: definition, remedies and defences
Understand the common law of passing off, possible remedies for trade mark misrepresentation and passing off defences
In the UK, businesses can use common law rights to protect their names, signs, slogans or trade marks against passing off.
What is passing off?
Passing off happens when someone deliberately or unintentionally passes off their goods or services as those belonging to another party. This action of misrepresentation often damages the goodwill of a person or business, causing financial or reputational damage.
In addition to straight passing off, there can also be:
- extended passing off - where misrepresentation of a particular quality of a product or service causes harm to another's goodwill
- reverse passing off - where a trader markets another business' goods or services as being his own
Raising an action of passing off can help you to prevent other people from using the goodwill associated with your business for their own benefit.
Elements of passing off
To establish a claim for passing off, you must meet three key requirements:
- Goodwill - you must prove that you own a 'reputation' in the mark that the public associates with your specific product or service.
- Misrepresentation - you must show that the trader has caused confusion and deceived or misled the customers into believing that their goods and services are actually yours.
- Damage - you must prove that the misrepresentation damaged or is likely to damage your goodwill, or cause actual or foreseeable financial or reputational loss.
Rights relating to passing off are established gradually with use. Goodwill in a mark can be particularly difficult to define. The reputation and goodwill of a business are generally considered as something that provides an identity to a business and its goods or services, and distinguishes them from those of its competitors.
Remedies for passing off
If you are successful in a passing off claim, there are several remedies available. You can:
- apply for an injunction to prevent the business from using your trade mark or goodwill
- apply to have the infringing goods destroyed
- sue for damages or seek account for lost profit
- request an inquiry to establish loss
Passing off defences
You may encounter different defences if you pursue a claim for passing off. For example, the defendant may argue that:
- the mark in question is not distinctive
- the mark is generic
- they have used carefully and honestly their own name
- you don't have goodwill in the mark
- you have given consent or encouraged the use of the mark
- you can't demonstrate damage or loss
The law on passing off is complicated. Claims can be hard to prove and taking action can be expensive, as the evidential burden of proof is solely on the trade mark owner.
If you suspect passing off or infringement, experienced in trade mark law.
While passing off most commonly applies to unregistered trade marks, it may also relate to registered trade marks.
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