United Kingdom: Trade Mark Registration – v – Trade Mark Use: A Costs/Risk Analysis

March 2004

Artists, Record Labels, Internet
By Emma Lambert, Solicitor

The best method of protecting your brand against copying and of increasing its value is to register it as a trade mark. Unfortunately registration can be expensive. If you choose not to register your brand it may be protected under UK law by the law of “passing off”. Recent Court cases are a reminder that passing off still has teeth but you cannot afford to be complacent even if you do register your brand as a trade mark.

One case in particular, Associated Newspapers Ltd and another v Express Newspapers, carries messages for brand owners.

The Problem
The Claimant, Associated Newspapers, owns the ‘Daily Mail’, ‘The Mail on Sunday’ and ‘Evening Standard’. The Defendant owns the ‘Daily Express’ and intended to launch a free evening newspaper in London, in competition with the Evening Standard. Various names were considered for the Defendant’s newspaper but each could be shortened to ‘The Mail’.

The Claimant argued that use of the proposed names: ‘The Mail’, ‘Evening Mail’ and/or ‘London Evening Mail’ would constitute “passing off” and trade mark infringement of the Claimant’s registered trade marks: The MailDaily Mail; andMail on Sunday. The Defendant argued that the Claimant did not have an exclusive right to use of the word ‘Mail’ claiming that it was a generic term used by other newspapers throughout the country. Further, any newspaper with the word Mail in the title was likely to be abbreviated to ‘The Mail’.

The Result
The Claimant succeeded in its claim of passing off. To do so it had to bring extensive and costly evidence to prove the three requirements of passing off: reputation and goodwill; misrepresentation; and damage.

The Judge held that reputation and goodwill had both been established in the London area, where the Defendant’s free newspaper was intended to be circulated. The fact that the Defendant’s newspaper was free did not impact on the question of misrepresentation: the consumer would still believe it to be connected to the Claimant. The Court held that damage was likely as the public could associate the free paper with the Claimant, which could damage the Claimant’s ‘personality’ and the public’s perception of its products.

On the other hand, the Claimant failed to prove trade mark infringement. The Court held that the mark, ‘The Mail’, had not been infringed as the goods it covered (“the Specification”) did not include ‘free newspapers’. Although it is possible to sue for infringement beyond the Specification of goods the Claimant had described the goods in the Specification as ‘sold’ and so excluded the possibility of the Specification covering ‘free’ publications.

The Lessons

Passing Off Claims

  • Passing off claims are expensive – and can be prohibitively expensive for small and medium enterprises
  • Limit the expense of passing off claims by having at your finger tips comprehensive evidence of your use of your brand, including financial details concerning your turnover and marketing expenditure and also your client base and catchment area, and dated copies of all packaging and advertising. Retain all of this information for at least 5 years – but ideally from when you adopted the brand until the present day. If this information is to hand, a “letter before action” can be drafted at short notice which can avoid costly litigation proceedings in the long run.

    Trade Mark Registrations

  • If you have trade mark registrations, manage your portfolio carefully
  • All specifications should be expertly drafted and full consideration given to new products or possible uses in the future
  • Do not forget to consider the activities of your competitors
  • Review your portfolio regularly to ensure your registrations continue to be suitable and provide adequate protection. If necessary be make fresh applications to update the specifications. An inaccurate specification can be extremely damaging.

    Trade mark registration is still the most cost-effective and preferred means of protection but to cover all bases you should:

    Maintain; and
    Audit Your Trade Marks.

    Always keep accurate records of your use of your brand so you can establish that it has developed a clear reputation and goodwill.

    This article can also be seen at:

    ctons 2003. First published in Pictons’ “In the Know” email newsletter. http://www.pictons.com. Pictons Solicitors are regulated by the Law Society. The information in this article is correct at the time of publication in December 2003. Every care is taken in the preparation of this article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.

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