What does passing off mean?
The law of ‘passing off’ can offer you some limited protection if a copycat rival causes damage to your business (loss of sales or damage to your good reputation, for example) after passing off your brand’s intellectual property as their own – essentially confusing your customers to think that the copycat is you.
However, taking action against a copycat infringer using the law of passing off isn’t as easy, reliable or cost effective as registering a trade mark and then taking enforcement action in reliance on that registered right.
Being eligible for this type of protection is far from assured and it is particularly challenging for startups and SMEs. This is because you’ll need to prove that:
1. your market reputation is already of a high enough level for the public to automatically assume the other copycat trader was you, and
2. the other trader’s deception to the public has caused you a loss of business (or other relevant damage, such as reputation loss) as a result.
What if someone copies your unregistered intellectual property?
We recommend getting advice from a legal expert. There are options, such as reporting the passing off to an internet registry company or looking into arbitration (a way of settling disputes outside of court with the help of a third party). You could also try for a court order that stops, compensates for and/or destroys all infringements of your IP wherever possible. As this can be a complex, costly matter, it’s definitely recommended that you approach this with the help of a lawyer.
But first of all, however, you should explore whether it is still possible to apply for trade mark registration. If your copycat hasn’t applied first, then you can apply online in a matter of minutes and get priority status over the copycat. Notice of your application is published in the Trade Marks Journal for a period of 2 months and the trade mark examiner may even notify your copycat of your application as part of the registration process. If/when your copycat opposes your application, you should be prepared to prove your prior usage of the trade mark, including the brand recognition and value attributed to it by your customers.
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