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Case law: Mere registration of a trade mark does not entitle owner to bring a ‘passing off’ claim against someone using a similar mark

Owners of unused trade marks should consider how they can use their marks, or risk being unable to bring a passing off action against anyone who uses a similar mark, a recent ruling makes clear.

June 2019

This update was published in Legal Alert - June 2019

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

A business had registered a trade mark to be used in relation to a new product it was developing. However, the product was never launched and the mark never used.

Two years later, two former employees of the business set up a competitor company and registered a domain name that was very similar to the business’s trade mark. The business took its former employees and their new company to court, claiming passing off.

Passing off laws aim to prevent third parties using a name, or other mark, in relation to their goods or services which is the same as, or similar to, another business’s name or mark, without permission. To win a passing off claim, a business has to show that:

  • Its name or mark has a good reputation (ie, there is ‘goodwill’ attached to it).
  • The name or mark is associated with its business.
  • There has been a misrepresentation by a third party (which need not be intentional), which leads, or is likely to lead, the public to confuse the third party’s goods and services with those of the business.
  • It has suffered damage because of the third party’s use of its name or mark.

The Court of Appeal ruled that even though it was registered, the business’s mark had not been used, therefore, the business could not possibly have developed sufficient goodwill to form the basis for a passing off action against the new domain name. The action therefore failed.

Operative date

  • Now

Recommendation

  • Owners of unused trade marks should consider how they can use them, or risk being unable to bring a passing off action against anyone who uses a similar mark, whether as a trading domain or any other name.

Case ref: Media Agency Group Ltd, Transport Media Limited v Space Media Agency & Ors [2019] EWCA Civ 712

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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