UNREGISTERED TRADE MARKS
If a Trade Mark is not registered, the only redress against an unscrupulous competitor who uses an identical or similar Mark is by way of the common law action of "passing-off". Such an action requires the owner to establish reputation and is much more expensive than an infringement action and is difficult to prove. Accordingly, it is now more important than ever to register your Trade Mark.
PASSING OFF
The five characteristics which must be present in order to create a valid cause of action for passing-off are:
A misrepresentation
Made by a trader in the course of trade
To prospective customers of his or ultimate consumers of goods or services supplied by him
Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and
Which caused actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. |
