What would happen if you found out that another company started trading under your name or a similar one, was using a similar logo or ‘get up’ (packaging/branding), whilst offering the same/similar products or services? You have not registered any intellectual property rights. What can you do?
Even if your trademark is not registered, copyright arises in your name/branding/packaging as soon as you start using it. Therefore, you may still be able to bring a claim for passing off against the other company, subject to the following considerations:
How long have you been trading for? Where have you been trading, i.e. UK/EU or other countries? Have you marketed your product/services in those countries? What are your marketing budgets?
These are a few questions that you should ask yourself when establishing goodwill and copyright in your intellectual property. You will need to be able to show that you have been trading for a period of time that is long enough to establish a reputation amongst customers. In addition, you will need to show that the customers associate your products/services with your company. For example, if customers see your product in a shop, they can identify that your company produced them and expect a certain level of quality.
Misrepresentation and likelihood of confusion on the average consumer
The term ‘average consumer’ means a person that is observant and somewhere between a regular consumer and an expert. Assume that another company, using the same/similar logo and ‘get up’ are selling a very similar product to yours.
The first requirement to be satisfied is carried out by analysing the differences and similarities between the two products- is the packaging the same/inherently similar (can include material, colours etc)? Is the name of the product the same/inherently similar?
The second requirement is that the other’s company actions, i.e. selling the same/similar product is likely to cause confusion on the average consumer. One scenario for likely confusion is when the average consumer will look at your product and the other company’s product and assume that, due to the similarities, you (or they) produced both products.
You are not required to show that customers are actually confused, just a likelihood of confusion. However, if you have emails from disgruntled customers, this could support your claim. For example, a customer who purchased the other company’s product, thinking it was yours, but he/she was not happy with the quality of it and decided to inform you instead of the actual provider. This will clearly show that confusion is likely amongst customers.
You are likely to suffer adverse consequences on sale figures and profit loss in this scenario. There is also a risk that you will suffer reputational damage if the other company is selling products of inferior quality than yours for a cheaper price.
You will need to show that you are suffering/likely to suffer loss due to the other company’s actions. If you can establish goodwill/copyright and likelihood of confusion as per the above, the likelihood of you suffering loss should follow naturally. Perhaps you have already suffered loss and you can provide documentary evidence by way of sales figures? This will support your claim, but bear in mind that you will need to show the loss of profit was caused by the other company’s actions.
It is always best to register your trademark early on. Bringing an infringement claim for a registered trademark (i.e. if another company uses your trademark) is quicker and less costly than bringing a passing off claim. However, you should be aware that the registration of a trademark is not definitive and if you can demonstrate prior use of a particular mark, any subsequent trademark registration, could be invalidated. It is, therefore, essential to protect your names/marks at the outset, so that these coincide as closely as possible.
We are always happy to help with the registration process and advise you along the way. Please do not hesitate to get in touch if you have any queries or would like a quote – call 01206 700113 or email [email protected]
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