Trade mark and passing off disputes

A trade mark may be registered or unregistered. Its essential function is to be a badge of origin distinguishing the goods and services of one undertaking from those of other undertakings. In order to fulfil this function, a trade mark needs to be distinctive. Disputes arise when a third party uses a trade mark that is too close to an existing trade mark, potentially resulting in consumer confusion and erosion of that essential distinctiveness.

Generally speaking, trade mark and passing off disputes go hand in hand. It is common for a claimant asserting that its registered trade mark has been infringed to include an allegation of passing off, at least initially.

For more information, see Practice Notes:

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Trade mark infringement—UK
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Passing off—goodwill, misrepresentation and damage
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Trade mark and passing off disputes—a practical guide

For more information about how trade mark rights relate to other IP rights, see Practice Note: IP right comparison table.

Registered trade marks in the UK

The law relating to UK trade mark registrations is set out in the Trade Marks Act 1994 (TMA

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Latest IP News

IP weekly highlights—25 September 2025

This week's edition of IP weekly highlights includes: Welcome to this week’s edition of the IP weekly highlights: a hand-picked summary of news analysis, updates and new content from the world of IP. These highlights focus on the key rights of copyright and associated rights, database rights, trade marks and passing off, designs, and patents as well as covering issues relating to confidential information, know-how R&D and IP disputes.

The construction of jurisdiction clauses in the context of the Contracts (Rights of Third Parties) Act 1999 and the mechanisms of service(Campeau v Gottex Real Asset Fund 1 (OE) Waste S.À.R.L)

Dispute Resolution analysis: This case considers a jurisdictional clause in the context of service under CPR 6.33(2B)(b), which allows service out of the jurisdiction where the defendant is party to a jurisdiction clause. There is no corresponding requirement for the claimant to be a party to that jurisdiction clause. The starting point is that jurisdiction clauses are not generally intended to concern disputes with third parties. However, that is no more than a starting point and one which can be departed from in appropriate cases. This was one such appropriate case whereby the circumstances and construction of the clause led to the finding that it did include the third party claimant’s (Mr Campeau) claim. While not strictly necessary given the judge’s findings in relation to the construction of the clause, Mr Justice Butcher considered that, where a jurisdictional clause was wide enough to encompass disputes from third parties, then it will likely also amount to a ‘relevant term’ for the purposes of section 1(4) of the Contracts (Rights of Third Parties) Act 1999 (C(RTP)A 1999). That meant that the third party, in seeking to enforce their rights under the SPA, was statutorily obliged to do so in England and so could rely upon CPR 6.33 (2B) (b) in that respect also. Written by Georgia Whiting, legal counsel (contentious construction) at Capita.

IPO announces new intellectual property minister appointment

The Intellectual Property Office (IPO) has confirmed the appointment of Kanishka Narayan MP as Parliamentary Under-Secretary of State in the Department for Science, Innovation and Technology, with responsibility for intellectual property. IPO Chief Executive Adam Williams welcomed the appointment, noting the minister's role in supporting the UK's intellectual property system and its contribution to economic growth through protection and commercialisation of innovations.

What changes to UK design law might be on the horizon?

IP analysis: The UK government is consulting on reforms to modernise design law, aimed at simplifying the system, improving enforcement, and adapting to digital innovation. Key proposals include introducing powers to prevent bad-faith filings, extending periods of deferment, and allowing the registration of designs in video format. The consultation also explores the simplification of unregistered design rights, the alignment (or otherwise) of protection in the UK and EU post-Brexit and addresses AI-generated designs. The consultation closes on 27 November 2025. Written by Emily Gamblen, trainee Patent attorney, and Caroline Marshall, partner, Potter Clarkson LLP.