UK: Trade Marks & The Law

Last Updated: 5 July 2001

The fundamental purpose and function of trade marks is to provide consumers with the means to distinguish the goods and services of one trader from another. It allows consumers to recognise your products or services as yours alone and thus avoid confusing it with the products or services of a competitor. Trade marks provide an exclusive way in which your goods or services can be identified as originating from you.

Trade marks also reflect certain attributes and qualities which consumers can identify with certain products and services and so be given a sense of assurance that their requirements of quality and taste will be met.

Independent of the above traditional functions and purposes of trade marks - given that businesses have invested enormous resources to develop and market not only their goods and services but also the brands which are associated with them – they also fulfil an ‘advertising function’. It is a function that needs to be protected in the same way as the function of identifying where the goods or services originate (i.e. one trader as opposed to another) and the function of assuring quality and taste.

Registered Trade Marks

A trade mark registration may be made in one or more of 42 classes of goods and services Trade Marks Act 1994 (‘TMA’). A single application can encompass any number of classes of goods or services. Once an application for a trade mark has been made the Registrar will cause it to be published so that oppositions to it can be filed within a window period of 3 months. Third parties are also allowed to make "observations" on whether a mark should be registered or not without making a formal "opposition".

It is important to understand that once an application is made, all documents filed in support of that application are out in the public domain. Accordingly, any confidential commercial information which is included in order to support your stand that the mark is indeed distinctive must be carefully drafted so as to protect such business-sensitive information.

Trade marks do not require any inherent originality as in the case of copyright, patents, registered design or design rights. Moreover the actual use of a trade mark prior to registration does not in anyway diminish it as would be the case in respect of patents and registered designs.


When a trade mark is registered, it distinguishes your goods or services from your rivals and thereby avoids confusion with other products or services. In other words, it protects against deceptiveness as to origin. It does not matter whether a trade mark is represented as a logo, brand, signature, name, picture, shape, slogan, jingle, colour, word, marque or otherwise, it performs the same functions. It is even possible to register smells and sounds as trade marks even though these may be difficult to represent graphically.

Section 1(1) of the TMA defines a trade mark as:

‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’.

Even if a mark is not at the time of registration ‘capable of distinguishing’ the goods or services as that of the owner, nevertheless it may be registrable if it will become distinctive in use and will afford an indication of origin without interfering with the legitimate freedom of other traders. In other words, it is capable of becoming distinctive later on.

In order to avail oneself of the protection granted to trade marks under the TMA, it is necessary first of all to make sure that the trade mark is properly registered. This may be to state the obvious but there is often confusion with other intellectual property rights like passing off, copyright, confidentiality and design rights which do not require registration under UK law. Such registration grants the registered proprietor the ‘exclusive rights in the trade mark which are infringed by the use of the trade mark in the [UK] without his consent’ [section 9(1)].

Thus, registration grants a statutory monopoly to use of the mark. This means that the registered proprietor can use the registration to prevent others from using the same or similar mark on the same or similar goods or services.


Secondly, the defendant’s use of the trade mark must fall within the definition of infringement as outlined under section 10 of the TMA. A defendant can be said to have infringed a trade mark in the following circumstances:

  • If he uses, in the course of trade, a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered¨ If he uses in the course of trade a sign where because it is identical with or similar to the trade mark and is used in relation to goods or services similar to or identical with those for which the trade mark is registered, ‘there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.’
  • If he uses in the course of trade a sign which is identical with or similar to the trade mark, and is used in relation to goods or services which are not similar ‘where the trade mark has a reputation in the [UK] and the use of the sign without due cause, takes unfair advantage of, or is detrimental to, the distinctive character of the repute of the trade mark.’

In view of the third situation, protection is afforded to well-known marks which have a reputation in the UK, even if they are not an already registered trade marks. This means that the existence of such unregistered trade marks can now be employed to oppose the registration of a later similar mark so long as it can be shown that – given the unregistered trade mark has a reputation in the UK - to allow registration would take ‘unfair advantage of, or is detrimental to, the distinctive character of the repute of the trade mark.’ Moreover, section 5(4) specifically provides that a trade mark cannot be registered if its use in the UK is liable to be prevented by the law of passing off protecting an unregistered mark used in the course of trade.

While a registered proprietor of a registered trade mark is entitled to take all actions available to him under the TMA for infringement, he is not entitled to make ‘groundless threats of infringement proceedings’ (section 21). In other words, you must be able to ‘put up or shut up’. So unless there is ample evidence of infringement – and you must be able to prove it – threatening with infringement action is itself actionable (i.e. you can end up being sued and paying damages to the other side). This is called a "threats action".

In Prince PLC v Prince Sportswear Group Inc (1997), the plaintiffs were an UK ITSP which operated for two years a website using the domain name ‘’. The defendants were a New Jersey sportswear company. The defendants accused the plaintiffs of infringing their federal trade mark ‘PRINCE’ and threatened legal action unless the domain name was immediately transferred to them and no future use of the word ‘Prince’ was made. Prince PLC took out a "threats action" against the defendants in the English High Court under section 21. Neuberger J found for Prince PLC and declared that businesses should be wary about alleging infringement because if a business makes use of unjustified threats then it only has itself to blame if those proceedings initiated by the business being threatened result in relief being granted against them.

However, there is nothing wrong with informing someone that your trade mark has been registered.

Unregistrable Marks

Certain kinds of signs or marks cannot be registered. Some are absolutely unregistrable. These include:

  • signs which cannot be graphically represented or are not ‘capable of distinguishing’;
  • trade marks which are not distinctive in character;
  • trade marks which exclusively indicate the kind, quality, value, geography or other such characteristics of goods or services;
  • trade marks which are recognised signs which are customary in trade; and specially protected emblems.

However, even in these kinds of situations, if it can be shown that a mark has been so extensively used that it has become distinctive and has gained a reputation, then the absolute prohibition may be overcome.

Furthermore, certain kinds of marks may be relatively refused registration. These include marks which are identical or similar to earlier marks and are sought to be registered for identical or similar goods or services which are likely to confuse the public. Thus, in Foundation Trade Mark [1994] RPC 41, the court – once it found that applications software and systems software were one and the same goods – concluded that an application to register the mark ‘FOUNDATION’ for systems software ought to fail in view of the fact that there had been a previous registration in respect of applications software.

Even where there exists only a mere association with earlier marks, a refusal to register on relative grounds may result.


The life of a registered trade mark is ten (10) years from the date of registration, unless it is renewed. If properly managed and administered the duration of a registered trade mark can be "forever". However, if a trade mark owner fails to renew a trade mark on time, it may be removed from the Register. Accordingly, it is wise to engage a reputable trade mark attorney to ensure that your trade mark is carefully monitored and regularly and properly renewed.


There are a number defences available to competitors to lawfully use the registered trade marks of rivals in certain circumstances. The most significant one is the allowance given to fair use. Under section 10(6) it is lawful for a competitor to use the trade mark of a registered proprietor ‘for the purpose of identifying goods or services as those of the proprietor’ or his licensee, provided it is ‘in accordance with honest practices in industrial and commercial matters’. This provision is designed to allow competitors to use the trade mark of another for the purposes of comparative advertisement. However, the use of such trade marks must be fair.

The question of when a use of another’s trade mark is fair has been visited by the courts a number of times since the passing of the TMA in 1994. An important case in this context is Barclays Bank v RBS Advanta [1996] RPC 307 where Laddie J concluded that a plaintiff could not succeed simply by showing that the defendant was taking ‘unfair advantage’ of the trade mark. He needed to show that there was ‘material dishonesty’ before he could succeed in establishing that there had been ‘unfair’ use. Subsequent cases have given rise to the objective standard of the "reasonable reader" to ascertain whether a use is ‘material dishonesty’ and, therefore, unfair.

Europe Wide & International Registration

Traditionally, one of the problems with the trade marks registration system has been that it is territorial. This means that if you register your trade mark in the UK, protection is only afforded in the UK and nowhere else. If you wish to get protection in France as well, for example, you must also register the trade mark in France. However, it is now possible to register a trade mark on a Europe wide basis by just making one registration which will grant protection in any one of the fifteen member states. This known as the "Community Trade Mark". A Community Trade Mark provides protection by means of a single registration covering the whole of the European Union. Registration of a Community Trade Mark is granted by the Office for the Harmonisation of the Internal Market (Trade Marks and Designs) which is located in Alicante, Spain.

This Europe wide registration is not really a unified registration system but an application deposited to seek protection in a number of nominated separate territories. It avoids the preparation and filing of separate applications in each country for which protection is required. However, the trade marks laws which apply to each such countries would be different.

It is also possible to file a single application for an International Trade Mark registration under the Madrid Protocol which covers Scandinavia, UK, Germany, Cuba and China.

Trade Marks Assignment & Licensing

Trade marks being property can be assigned in the same way as other non-real property under section 24. Furthermore, under section 28 of the TMA it is possible to licence to use a registered trade mark on a general or limited basis or on an exclusive or non-exclusive basis. This means that it is possible for the trade mark owner to licence production or distribution under the mark. Any such licence, however, must be in writing.

Licensees - whether exclusive or not or even sub-licensees (in certain situations) - can sue for infringement. Moreover, a non-exclusive licensee may cause the trade mark owner to take infringement proceedings and if the latter fails to do so within 2 months, the former may proceed in his own name. However, for other interlocutory relief the owner must be joined in. An exclusive licensee, on the other hand, may proceed on his own in any infringement action as if there had been an assignment of rights. It is important in order to benefit from these rights that licences be registered under section 25.

Passing Off

The alternative way to protect a mark that is being used by a business, whether or not it is registered as a trade mark, is to employ the tort of "passing off". The basis of this old common law tort is that ‘nobody has any right to represent his goods as the goods of somebody else’. It is a mechanism for protecting the goodwill that has arisen between a business and its customers. It protects that aspect of the various functions of a mark which identifies the commercial origins of the goods, i.e. that the goods bearing your mark are indeed yours!

Traditionally, in order to succeed in obtaining an injunction against a rival for passing off, you need to establish the following:

  • that there was a misrepresentation
  • which was made by a competitor in the course of his trade
  • to his potential customers
  • which was calculated to injure your business and goodwill
  • and which causes actual damage or is likely to do so to your business or goodwill

It is critical that it is shown that your rival is unlawfully assuming your goodwill as his own. It is not enough that customers are in a state of confusion about your goods or services and the goods or services of your competitor.

Thus there are three elements which must be established by a claimant in a passing off action:

  • he must establish a goodwill or reputation attached to goods or services which he supplies in the mind of the purchasing public by association with identifying ‘get up’ as distinctive specifically of the claimant’s goods or services
  • he must demonstrate a misrepresentation by the competitor to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are goods or services of the claimant
  • he must demonstrate that he suffers or that he is likely to suffer damage

Hence, the essence of passing off is a misrepresentation to the public which is liable to lead them to believe that the goods or services offered by your rival are in fact yours.

However, a further aspect of this tort which has been recently resurrected arises in situations where a competitor puts or authorises someone to put an ‘instrument of deception’ into the hands of others. Even where there is no immediate placing or authorising of an ‘instrument of deception’ into the hands of others, so long as there is a likelihood of such action in the future, passing off is committed. For example, if a person registers a well-known domain name for the sole purpose of selling it to another person at a high price so that the latter could use it dishonestly, that is enough, without more, to amount to passing off; even if he has done nothing with it as yet. This certainly is the impact of the now famous ‘One in a Million’ case ([1998] FSR 265; The Times, December 2, 1997, at 8].

This means that a company’s reputation and goodwill can now be protected through passing off, even if the traditional elements are not met. This is because where trade names are well-known household names and the defendant intends to use that goodwill and threatens to sell it to another who might use it for passing off to obtain money from the true owner of that trade name, the registration of such trade names (the ‘instruments of fraud’) will amount to the commission of the tort of passing off. This is because the value to the defendant who registers such names lies in the threat that it would be used in a fraudulent way. Such fraudsters are commonly called "cybersquatters"

It is now, therefore, possible for registered trade mark owners as well as others to thwart cybersquatters from maintaining ownership over domain names on the basis that there may be future passing off. And this is because the courts are prepared to extend passing off to those who merely threaten to sell domain names to others. There has to be an element of bad faith, however, in the case of registered trade marks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.