Trade mark and passing off disputes

A trade mark may be registered or unregistered. Its essential function is to be a badge of origin distinguishing the goods and services of one undertaking from those of other undertakings. In order to fulfil this function, a trade mark needs to be distinctive. Disputes arise when a third party uses a trade mark that is too close to an existing trade mark, potentially resulting in consumer confusion and erosion of that essential distinctiveness.

Generally speaking, trade mark and passing off disputes go hand in hand. It is common for a claimant asserting that its registered trade mark has been infringed to include an allegation of passing off, at least initially.

For more information, see Practice Notes:

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Trade mark infringement—UK
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Passing off—goodwill, misrepresentation and damage
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Trade mark and passing off disputes—a practical guide

Registered trade marks in the UK

The law relating to UK trade mark registrations is set out in the Trade Marks Act 1994 (TMA 1994), which implemented Directive (EU) 2015/2436 into UK law (and previously, its predecessors, Directive 89/104/EEC and Directive 2008/95/EC).

The

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