How to protect your brand: a guide to trademarks and passing off

In a modern world where we have access to endless product and service options at the click of a button, in order to survive and maintain their position in the market, firms need to adopt savvy new tactics to influence customers.

Over the past few years, and particularly since the economic downturn, businesses have really wised up to the weight brand image and perception holds in swaying buyer behaviour – and in turn – increasing business value. Having a strong brand image that customers both recognise and relate to is one of the most valuable assets a business can have.

When the online fashion retailer Boohoo went into liquidation during the recession, some of the most valuable business assets that were sought-after by the firm’s competitions were its domain name and trademarks. Even though the business itself was in trouble, due to careful brand management, there was still huge capital in the Boohoo brand.

Trade marks

Trademarks are a badge of origin for businesses. They allow firms to register a feature of their brand which distinguishes them from their competitors.

While any form of intellectual property has the potential to be trademarked – providing it resonates with consumers as a badge of origin – strict rules surrounding description marks and geographical origin often cause applications to fail.

Having a registered trade mark is beneficial to your business because it means that you can take legal action against another person or business if your brand is used without your permission, or if it uses a sign which is identical or similar to your trade mark. Trade marks can really help in preventing competitors from damaging the reputation or authenticity of your brand.

The protection provided by a trade mark can last for an unlimited period, provided renewals are kept up to date and the owner of the mark actively seeks to protect the brand. While registration with the Intellectual Property Office is proof of ownership of the mark and allows others to see whether they are infringing it, it does not police the marks for you, so this is something you need to monitor.

As the strongest form of protection, trademarks are covered by the Trade Marks Act 1990. It is important to note that the act’s scope for registration has not developed with market changes, so registering colours or sounds, which many businesses now use in addition to the traditional marks, is problematic in the UK.

Passing off

Passing off is helpful in preserving brand value as it allows businesses to stop others riding on the backs of their brand’s success by falsely claiming to be associated to that brand.

Problematic marks such as colours and sounds, which face difficulty in obtaining registration in the UK, may therefore be afforded some protection under passing off, but again this requires active policing of the mark.

To bring a passing off action, businesses must prove:

• Goodwill: businesses must show that they’ve developed a reputation of goodwill in the market with the brand. Only traders with a reputation of goodwill can create a passing off action. This can be evidenced by quantitative data, such as sales figures;
• The public associate your mark with the goods you produce or services you provide;
• Misrepresentation as to trade origin: another individual or business has made a misinterpretation to the public that could lead people to believe that the goods or services they’re providing are yours;
• Damage: the misrepresentation has caused damage to the goodwill the public has in your brand.

Effectively managing a brand requires businesses to take an active role in policing their rights, so it is vital that you know what your rights are, as failure to monitor them may lead to protection being lost or remedies being lost in the event of infringement.

For more information on protecting your brand through trade marks or passing off, contact our Corporate team on 01772 258321.