Avoiding trade mark infringement and passing off claims
Produced in partnership with Boyes Turner LLP
Avoiding trade mark infringement and passing off claims

The following IP guidance note Produced in partnership with Boyes Turner LLP provides comprehensive and up to date legal information covering:

  • Avoiding trade mark infringement and passing off claims
  • What is a trade mark?
  • Defences to trade mark infringement action
  • Unregistered trade marks
  • Practical points—how to reduce the risk of infringing a trade mark
  • When trade mark infringement seems likely
  • Practical points—how to protect a trade mark registration and avoid litigation
  • Other considerations

Litigation is an expensive and time consuming process. While there may be occasions when tactically it makes sense to litigate, it is generally best avoided. Trade mark infringement and passing off proceedings are no exception.

In addition to being a drain on resources, such proceedings may:

  1. delay the launch of new products

  2. require products to be recalled/renamed

  3. require businesses to be renamed

  4. result in large sums of money being payable by way of damages/costs

  5. result in wasted advertising/marketing costs

  6. cause damage to business reputation

This Practice Note sets out practical ways in which clients can minimise the risk of infringing third party trade mark rights.

What is a trade mark?

A trade mark’s essential function is to be a badge of origin. It distinguishes the goods and services of one undertaking from those of other undertakings.

  1. a trade mark may be registered and/or unregistered

  2. trade marks may comprise words, slogans, logos, colours, sounds, three-dimensional shapes or even smells

  3. the fact that a mark is not accompanied by an ® or TM symbol does not mean that it is not a trade mark. Rights in a mark are not dependent upon these symbols being used

Registered trade marks

The law relating to the infringement of UK trade mark registrations is set out in the Trade Marks Act 1994 (TMA 1994). The key provisions relating