Trade Names and Passing Off

What can I do if someone is trading using my trade name?

A trading name or business name is the name used by either a person, partnership or a company for carrying on business which is not the same as their own name.

The Trade Marks Act 1994

There are no intellectual property rights in a trade name, but it is possible to register the trade name as a trade mark and receive the protection under the Trade Marks Act 1994.

If you haven’t registered your trade name as a trade mark, and you notice that someone else is operating under the same or similar trade name then you are protected under the law of passing off.

What is passing off?

There is a potential for an action for passing off if someone or a business, passes off another business’s goods or services to deceive or confuse customers. Passing off protects the goodwill attached to a trade name or business. Passing off can also be used to protect slogans, logos, symbols or presentation as seen by the customer.

By way of an example, in 1996 the brand “Neutogena” commenced court proceedings against a defendant using the name “Neutralia”. The court restrained the defendant from using the name finding that “Neutralia” was sufficiently similar to the “Neutogena”.

Bringing a claim for passing off

In order to bring a claim for passing off, the claimant must be able to show firstly, that they have a reputation or goodwill in their trade name. Goodwill has been described as “the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom”.

Secondly, that there is misrepresentation with potential to cause confusion amongst ordinary, sensible members of the public that the defendant’s goods or services are those of the claimant.

Thirdly, as a result it has caused damage. This could be show by way of diversion of sales or loss of sales or damage to reputation for example.

Seeking damages

If a claimant can establish these three elements then they can seek remedies from the court by way of an interim injunction to restrain further dealings by the defendant but also seek damages for loss of sales, damage to goodwill and reputation, an account of profits or an order for delivery up or destruction of the offending items.

If you have any questions about passing off, trade marks or to discuss how we could help, please contact the Brand Protection team.

Further information:

The Intellectual Property Office governs trade marks and IP in the UK.
https://www.gov.uk/government/organisations/intellectual-property-office