Q - It sounds as though I have to prove a lot of facts before I can be successful with a passing off action. Also, I am thinking of using some new branding which doesn't have any goodwill attaching at the moment. Is there anything else I can do to ensure that other businesses do not attempt to "poach" the use of these assets?
A - Related to, and an extension of, the law relating to passing off, is the right to register a Trade Mark. If you wish to ensure that your business name, a brand name, a logo or other badge of trade is protected it may be possible to register these as trade marks. The Trade Marks Act 1994 adds to the protection available under the law of passing off, without in any way affecting the right to take a competitor to court as described in the previous section.
For the definition of a Trade Mark, one need look no further than the Act, which states that a trade mark is "any sign capable of distinguishing goods or services of one undertaking from those of other undertakings"
A Trade Mark can therefore be a word, a design, letters, numerals, and the shape of a product or its packaging. If your business has a distinctive trade name or logo it is likely to fall within this category. It is even possible to argue that a colour or combination of colours can be registered, for example "blue" paraffin. The important thing is that it is capable of graphic representation, so that its image can be entered onto the Register of Trade Marks. One famous example is the roaring MGM lion.
A Trade Mark is entered in a register administered by the Intellectual Property Office. By registering a Trade Mark, you gain the right to its exclusive use for a period of ten years, although it is possible to renew this registration for further periods of ten years. A Trade Mark's registration can be extremely useful, in that it is no longer necessary to prove that your business is the true owner of the mark. The register is taken as sufficient proof of that.
Applications for registration are made to the Registrar, and need to be advertised to avoid the possibility of attempting to inadvertently register another business's existing Trade Mark. If an attempt is made to register, say, a logo which is so similar to another which is already registered that there would be risk of confusion in the minds of the public then that application will be refused. If within three months no objection is received, the Trade Mark is registered and becomes your property.
You can apply for a UK Trade Mark at the UK Intellectual Property office. A UK Trade Mark will give you protection in the UK but not elsewhere. Many clients apply for European wide protection by making an application to the Office of Harmonization for the Internal Market. Although more costly, a successful application awards protection in 27 European countries We regularly file both UK and EU applications and Kirk Dailly and Sarah Winter can answer any questions you may have if you are contemplating applying.
When taken together, the law of passing off and the use of registered Trade Marks can be useful tools in the protection of the intellectual property of your business. Blackadders can guide and advise you in their effective use to protect your hard-won business assets.