Registration confers on its proprietor the statutory right to the exclusive use of the mark in connection with the goods or services for which it is registered (section 9, TMA and Article 9, EUTM Regulation). Registration therefore gives the proprietor the right to sue for trade mark infringement any person who uses an identical or similar mark (termed a “sign” in the legislation) in the course of trade in connection with identical or similar goods without authorisation. The proprietor must also show that the use has caused or is likely to cause confusion, except in cases where the marks are identical and the goods or services are also the same (section 10, TMA and Article 9, EUTM Regulation).
If the mark has a certain level of reputation in the UK, there is a wider right to prevent others from using the same or a similar sign for goods or services (whether similar or not), where that use, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (section 10(3), TMA and Article 9(2)(c), EUTM Regulation).
Goodwill arising through our use and investment is also protectable under English law through the common law cause of action of passing off. The action under passing off allows the owner of goodwill acquired through use of a mark to claim relief in the courts against any third party who misrepresents the commercial origin of goods by seeking to pass off its goods or services as those of the goodwill owner, in a way which causes the owner of the goodwill damage. An actionable misrepresentation includes instances where a third party’s actions give rise to the impression that there is an endorsement, association or other commercial connection between that party and the owner of the goodwill. Damage does not necessarily have to be any tangible financial loss such as loss of sales and can include damage as a result of dilution of a brand name or erosion of its distinctiveness.
Passing off is an action available to owners of unregistered TM, but in some circumstances, an action for passing off can succeed in relation to registered TM where a trade mark infringement claim cannot. For example, the makers of “Penguin” chocolate biscuits were able, by means of a passing off action, to prevent the supermarket chain Asda from marketing its own brand of biscuits in packaging deceptively similar to that used for “Penguin” biscuits (United Biscuits (United Kingdom) Limited v Asda Stores Limited [1997] RPC 513). By contrast, they failed in their claims in this action for infringement of registered trademarks (such as a claim that the word mark PENGUIN was infringed by Asda’s choice of “Puffin” as its brand name and a claim that Asda’s puffin bird device infringed registrations of penguin devices).
If the owner of goodwill in an unregistered mark has good grounds for preventing use of another trader’s mark by way of an action in passing off, that person will also be able to prevent that other trader from registering its mark. The owner of the unregistered mark would have to prove that passing off would occur if the applicant’s mark were to be used as set out in the trade mark application.
