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Broadly speaking, passing off is when someone markets products/services that are similar to yours under a brand similar to yours

The importance of protecting your brand from attack

It’s one of the last things you want to hear as a business owner: you’ve built up your reputation and loyalty with your customers based on your brand and values, only for a competitor to muscle in and seek to profit on the back of that hard work. So, what can you do?

  • Confirm whether you’ve protected your brand with a valid trade mark registration

    It is far simpler to challenge a competitor’s unlawful use of your brand (whether a copy or very similar name/logo) if you already have a trade mark registration for it (you can register the word and/or your logo). The registration may be just for the UK, or multi-national, but the important thing to check is that it is still valid and hasn’t expired through failure to renew the registration (you should diarise the renewal date for every ten years), nor that the registration has become invalid or revoked through challenge or non-use.
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  • What if my brand’s not registered?

    All is not lost. Your brand may still be protected from being “passed off” by competitors, but you will have to prove you have built up a level of goodwill and reputation in your brand, hence it being simpler to be able to rely on a prior trade mark registration. If your brand is registered, it’s not uncommon to assert passing off in addition to trade mark infringement.

  • So what should I do next?

    The next step is to confirm that the competitor is using a logo/name that is either:

    1. identical to yours on identical goods or services, or
    2. identical on similar goods or services so that people are likely to be confused, or
    3. similar to your brand on identical goods or services or similar goods or services resulting in people likely being confused.

    If you fall within any one of these, then the next step is to write to the competitor.

  • The letter of claim

    Whether you’re relying on passing off or infringement of your registered trade mark, you’ll need to write to the infringing company to assert your rights and demand that they stop infringing those rights and/or pay you damages for their unlawful use of your brand. This is where we can help you set out your arguments, addressing the commercial reality within the legal framework so as to protect and defend your brand and to seek to exert the requisite pressure on your competitor to avoid having to resort to a court claim. In this context, we will want to consider the whole picture, including to what extent, if at all, keywords (or cyber squatting) are being used by a competitor to divert web traffic to their sites from your own.

  • Commercial resolution is (nearly) always preferable

    With a carefully crafted letter of claim, an infringing competitor will more often than not capitulate (either expressly, by agreeing to stop infringing) or simply by ignoring the letter, but more importantly ceasing to unlawfully use your brand. This is the ideal: allowing you to move forward and focus on your business priorities for the future.

  • Can we live together?

    There will be some instances in which you may be able to ‘co-exist’ with a competitor with an identical or similar brand: for example if you are in completely separate industries (and/or geographical territories) resulting in a very low risk of confusion in the minds of your customers. In this case, a carefully drafted co-existence agreement will serve you well in which both parties agree their respective spheres of use of the common brand. Use of co-existence agreements provides protection for both parties’ use of the brand and certainty going forward. It also means you have an ally willing to fight in your corner should a third party infringe upon your trade mark rights.

  • Trade mark infringement / passing off claim

    What should you do in the case of a persistent infringer or if you’ve lost business as a result of a competitor’s wrongdoing? Litigation is an expensive and time-consuming business (for both parties), which is why we seek to avoid it for you. However, unfortunately harmony is not always possible and sometimes there is no alternative. Having sent your ‘cease and desist’ letter of claim and received no satisfaction, you’ll need to consider whether issuing a claim is the right next step for you. This will involve a careful evaluation of the evidence that you’ll need to already have, or to gather, in order to prove unlawful infringement and/or passing off. If a competitor is counterfeiting your goods, this will be a relatively straightforward matter; however, in many situations, you’ll have to produce evidence of confusion in the minds of your customers and/or that they were deceived by the competitor.

  • Filing and serving your claim

    If you find yourself having to make a claim, then we can support you in deciding the best venue in which to commence the claim (either the High Court or the Intellectual Property Enterprise Court), considering the best legal support for the claim (including instructing a barrister) and considering whether other remedies should be considered (such as website blocking orders, notice and take-down letter to ISPs or domain address transfer complaints).

Robin Hassan Principal at My Inhouse Lawyer

Written by Robin Hassan
Principal at My Inhouse Lawyer

One of our values (Growth) is, in many ways, all about cultivating a growth mindset. We are passionate about learning, improving and evolving. We learn from each other, use the best know-how tools in the market and constantly look for ways to simplify. Lawskool is our way of sharing with you. It isn’t intended to be legal advice, rather to enlighten you to make smart business decisions day to day with the benefit of some of our insight. We hope you enjoy the experience. There are some really good ideas and tips coming from some of the best inhouse lawyers. Easy to read and practical. If there’s something you’d like us to write about or some feedback you wish to share, feel free to drop us a note. Equally, if it’s legal advice you’re after, then just give us a call on 0207 939 3959.

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