Is there infringement protection for unregistered trademarks under UK law?
What is an unregistered trademark?
The property right in an unregistered trademark lies not in the mark itself but in the goodwill in the business in connection with which it has been used (Reddaway v Banham [1896] AC 199 and AG Spalding & Bros v AW Gamage Limited [1915] 32 RPC 273).
Unregistered trademark rights do not exist at the outset of the creation of a trademark. These rights accumulate over a period of time and can usually be said to exist once the trademark can be said to effectively distinguish the business from their competitors. Unregistered trademark rights generally exist in a particular territory once the trademark has developed a reputation with respect to the goods and/or services.
What is the relevant statute?
The jurisdiction is that of the courts of England and Wales.
Trademarks Act 1994 section 11 (3) sets out that an “earlier right” exists so that an unregistered trademark or other sign continuously used in relation to goods or service can be relied on for the right to sue for passing off.
How are unregistered trademarks protected against infringement?
Unregistered trademarks are protected through the tort of passing off. The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842) 5 Beav.66 at 73). There is no statutory cause of action for passing off. The tort has developed on an ad hoc basis, by way of decisions that often seem motivated by a judicial desire not to let an unmeritorious wrongdoer escape liability.
The tort of passing off does not afford the owner of the goodwill a monopoly in the mark or get-up; it protects the trader’s business against what might in broad terms be called a certain type of “unfair competition”.
Two forms of passing off exist:
1. The “Classic Form”
· Involves a three-part test – this “classical trinity” test was described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12)
· A goodwill or reputation attached to the goods or services
· A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant
· Damage to the claimant, by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant
2. The “Extended Form”
· Developed in connection with actions in passing off brought by (at least one of) a class of traders sharing the (collective) goodwill in a mark
· Explained by Lord Diplock in the Advocaat case (Warnick (Erven) Besloten Veenootschap v J Townend & Sons (Hull) Ltd [1980] RPC 31) as comprising five elements:
i. A misrepresentation;
ii. Made by a trade in the course of trade;
iii. To prospective customers of his or ultimate consumers of goods or services supplied by him;
iv. Which is calculated to injure the business or goodwill of another (in sense that this is a reasonably foreseeable consequence);
v. Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so
These two forms are not different torts. Instead, the courts refer to one form or the other depending on which is more appropriate to the facts of the case.
Who can sue for passing off?
Actions may be brought by anyone who can established the existence of the three elements of goodwill, misrepresentation and damage. These actions are open to all types of traders, including companies, partnerships and sole traders.
What is goodwill?
Goodwill is “the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom.” (Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at page 223).
This is legal property that the owner may deal with as he wishes. The courts will sometimes attribute goodwill to the party who is primarily associated with the name or other indicia in question.
What qualifies as misrepresentation?
The most common form of misrepresentation is where a defendant falsely represents that his goods are the goods of the claimant. The misrepresentation may take the form of an express statement by the defendant to this effect or may be implied from the use by the defendant of the same or similar distinguishing marks in respect of his goods or services as are used by the claimant.
What qualifies as damage?
Action in passing off can be brought to protect goodwill from damage. To bring a successful action for passing off, the claimant must show that the misrepresentation by the defendant caused damage to his identifiable goodwill, or in a quia timet action, that damage to the claimant’s goodwill is reasonably foreseeable. Millet LJ stated in Harrods, “damage to reputation without damage to goodwill is not sufficient to support an action for passing off” (Harrods Ltd v Harrodian School Ltd [1996] RPC 697 at 718).
What are the key differences between passing off and trademark infringement?
The differences relate to the constituent elements to what a claimant has to prove and what the court will look at. In passing off, a claimant will have to demonstrate that it has protectable goodwill and that might also include the geographical scope of that goodwill and the type of scope that that goodwill relates to in terms of the type of product or service that is being provided. It will then need to demonstrate that the defendant has made a misrepresentation, whether intentionally or not intentionally, and that it has then suffered damage as a result of that.
With passing off, if you can show that actually consumers do recognise your goods for that reason or that actually a key reason why consumers buy them is because of those features, you can say more than likely you have got a goodwill there. This is reflected in some of the leading cases such as Jif Lemon which was the case which drew together all the historical law and set down the tests for passing off. Also, the Puffin-Penguin case where the claimant lost the registered trademark, but it won on passing off to do with the packaging of its biscuit.
Great research @Angeline. Here's where you could improve your research:
You have only mentioned about the lemon test and explained each point in theory. Legal research is about creating an argument that persuades the case in your favor by not only creating rebuttals but also mentioning arguments in your favour. So when you're talking about the two approaches, you should research about how those approaches have been used. have those approaches been used simultaneously or do they only have specific instances where in they are used?
your demonstration of the difference also requires a persuasive authority. Persuasive authority builds your case. Once you have that case, you demonstrate how the difference is actually applied.
Third, each of the elements that have been separately mentioned, great job, however, for good will where you have mentioned a case, analyse the research by explaining the facts of the case and how the court reached that conclusion. When you analyse, question yourself to find cases where such conclusion was not cited. You need to have both pro and against arguments for an issue.
Is there infringement protection for unregistered trademarks under UK law?
What is an unregistered trademark?
The property right in an unregistered trademark lies not in the mark itself but in the goodwill in the business in connection with which it has been used (Reddaway v Banham [1896] AC 199 and AG Spalding & Bros v AW Gamage Limited [1915] 32 RPC 273).
Unregistered trademark rights do not exist at the outset of the creation of a trademark. These rights accumulate over a period of time and can usually be said to exist once the trademark can be said to effectively distinguish the business from their competitors. Unregistered trademark rights generally exist in a particular territory once the trademark has developed a reputation with respect to the goods and/or services.
What is the relevant statute?
The jurisdiction is that of the courts of England and Wales.
Trademarks Act 1994 section 11 (3) sets out that an “earlier right” exists so that an unregistered trademark or other sign continuously used in relation to goods or service can be relied on for the right to sue for passing off.
How are unregistered trademarks protected against infringement?
Unregistered trademarks are protected through the tort of passing off. The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842) 5 Beav.66 at 73). There is no statutory cause of action for passing off. The tort has developed on an ad hoc basis, by way of decisions that often seem motivated by a judicial desire not to let an unmeritorious wrongdoer escape liability.
The tort of passing off does not afford the owner of the goodwill a monopoly in the mark or get-up; it protects the trader’s business against what might in broad terms be called a certain type of “unfair competition”.
Two forms of passing off exist:
1. The “Classic Form”
· Involves a three-part test – this “classical trinity” test was described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12)
· A goodwill or reputation attached to the goods or services
· A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant
· Damage to the claimant, by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant
2. The “Extended Form”
· Developed in connection with actions in passing off brought by (at least one of) a class of traders sharing the (collective) goodwill in a mark
· Explained by Lord Diplock in the Advocaat case (Warnick (Erven) Besloten Veenootschap v J Townend & Sons (Hull) Ltd [1980] RPC 31) as comprising five elements:
i. A misrepresentation;
ii. Made by a trade in the course of trade;
iii. To prospective customers of his or ultimate consumers of goods or services supplied by him;
iv. Which is calculated to injure the business or goodwill of another (in sense that this is a reasonably foreseeable consequence);
v. Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so
These two forms are not different torts. Instead, the courts refer to one form or the other depending on which is more appropriate to the facts of the case.
Who can sue for passing off?
Actions may be brought by anyone who can established the existence of the three elements of goodwill, misrepresentation and damage. These actions are open to all types of traders, including companies, partnerships and sole traders.
What is goodwill?
Goodwill is “the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom.” (Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at page 223).
This is legal property that the owner may deal with as he wishes. The courts will sometimes attribute goodwill to the party who is primarily associated with the name or other indicia in question.
What qualifies as misrepresentation?
The most common form of misrepresentation is where a defendant falsely represents that his goods are the goods of the claimant. The misrepresentation may take the form of an express statement by the defendant to this effect or may be implied from the use by the defendant of the same or similar distinguishing marks in respect of his goods or services as are used by the claimant.
What qualifies as damage?
Action in passing off can be brought to protect goodwill from damage. To bring a successful action for passing off, the claimant must show that the misrepresentation by the defendant caused damage to his identifiable goodwill, or in a quia timet action, that damage to the claimant’s goodwill is reasonably foreseeable. Millet LJ stated in Harrods, “damage to reputation without damage to goodwill is not sufficient to support an action for passing off” (Harrods Ltd v Harrodian School Ltd [1996] RPC 697 at 718).
What are the key differences between passing off and trademark infringement?
The differences relate to the constituent elements to what a claimant has to prove and what the court will look at. In passing off, a claimant will have to demonstrate that it has protectable goodwill and that might also include the geographical scope of that goodwill and the type of scope that that goodwill relates to in terms of the type of product or service that is being provided. It will then need to demonstrate that the defendant has made a misrepresentation, whether intentionally or not intentionally, and that it has then suffered damage as a result of that.
With passing off, if you can show that actually consumers do recognise your goods for that reason or that actually a key reason why consumers buy them is because of those features, you can say more than likely you have got a goodwill there. This is reflected in some of the leading cases such as Jif Lemon which was the case which drew together all the historical law and set down the tests for passing off. Also, the Puffin-Penguin case where the claimant lost the registered trademark, but it won on passing off to do with the packaging of its biscuit.
Key cases:
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491
United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513
Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2010] EWCA Civ 920