Trade Mark & Passing Off Myths

Below are some Trade Mark & Passing Off Myths. Please click on the text to see if it is true or false.

Two Pantone® shades away is safe from infringement

With trade mark infringement and passing off, the court will look at the overall impression rather than the percentage copied or number of changes. Two shades is not generally much of a change and is usually unlikely to turn an identical logo into one which does not cause a likelihood of confusion.

If you state on the product "This in no way implies an association with [brand]" (or other typical disclaimer wording) then there is no infringement / Putting "unofficial" after the breach means that there is no infringement

Disclaimers such as these are unlikely to save a defendant from a claim for trade mark infringement or passing off, particularly if the disclaimer is not honestly meant (e.g. where the product is clearly a "rip-off" imitation). It can sometimes even work against you since it is arguably an admission there is a risk of confusion. Having said that, while a disclaimer is unlikely to be determinative either way, including one may help a defendant in arguing that there is, for example, no misrepresentation/deception for passing off.

Only words or graphic representations can be registered as trade marks

Any sign which is capable of being represented graphically and of distinguishing the goods or services of one undertaking from another undertaking can be registered as a trade mark. For example, colours, shapes and the MGM lion's roar have all been registered as trade marks.

Once you have registered a trade mark, it does not matter whether you use it or not

If a trade mark has not been used for a period of five years it becomes vulnerable to revocation. Use must be made of the trade mark by the owner of the trade mark (or with his consent) and the use must be genuine and not token.

A registered mark always takes precedence over an unregistered mark

Being first to file a trade mark application is generally essential. However, a long-used and well-known unregistered mark can block someone else's application and prevent the use of their mark, even if successfully registered. Such a prior passing off right can trump a later registration.

"TM" means that a trademark is registered

A very common, but understandable, misconception is that the TM sign means that a trade mark is registered. The ® symbol or the abbreviation "RTM" (for Registered Trade Mark) mean that. It is a criminal offence in the UK to use the ® symbol or RTM abbreviation if there is in fact no registration. The TM sign has no legal significance in the UK but is often used to indicate that a mark has brand significance even if not registered.

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Company Name & Domain Name Myths

Below are our Company Name & Domain Name Myth questions. Please click on the text to find the answer.

You can protect or "reserve" a trade mark, or justify the infringing use of a trade mark, simply by incorporating a company with a name / changing your own name by deed poll to a name that corresponds to that mark / registering a domain name

A registered company name or domain name do not generally give rights in the name that can be enforced against third parties. Such rights only arise from marketing and use of the name (and/or trade mark registration).

My domain name is automatically trade marked

Domain names do not give any legal rights as such. A domain name registration will only stop another party from registering the same domain name. If the domain name conflicts with a trade mark, it may have to be given up.

If I own the trade mark for my company's name, I automatically have the right to register my company's name as a domain name

A trade mark does not automatically give you the right to register a domain name incorporating your trade mark. Another person may have already registered the domain name you want. However, you might be able to take action against that person if they are using the domain name to pass off their goods/services as yours, or if they have registered the domain name in order to sell it back to you at a premium.

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