Trademark Infringement

Before registering a trademark, you must make sure that the trademark has not already been registered.

You must also check that no ‘passing off’ issues arise. This is when you infringe an unregistered trademark that is protected under common law.

Checking for trademark infringement

Before registering a trademark, it’s important to make sure that your proposed trademark doesn't infringe any existing trademarks. Your first consideration should therefore be to search the Trademarks Register online. You are looking for any existing trademarks which are ‘the same or substantially similar’ to your trademark.

If there is an existing trademark that is the same or substantially similar to yours, then you will need to reconsider your proposed trademark.

Passing off

Even if the Trademarks Register search doesn’t produce any results for similar trademarks, there is still the risk of trademark infringement due to ‘passing off’. This is where you infringe an unregistered trademark that is protected under common law.

Passing off becomes an issue where a company or an individual (the ‘Trader’) trades using a name which they have not registered, but has built a business and a reputation using that name. As such, if you were to register a trademark which is the same or similar to that trading name, consumers may be misled into believing that you and your business are associated with the Trader. This is known as ‘passing off’, and the Trader could bring a claim against you for using their trading name, even if that trading name is not registered.

Because of this, further investigations must be made to make sure no passing off claims will be brought against you.

Instruct our trademark solicitors

If you instruct us to register a trademark on your behalf, we'll complete the necessary investigations for you. We’ll make sure there are no issues with trademark infringement or passing off in relation to your proposed trademark. We can then make the application for you.

Once the application is submitted, there is a two month period during which the Trademarks Registry will examine whether the application is legally suitable for trademark registration. If the trademark passes this stage, there follows another two month period referred to as the ‘Publication Stage’. This is where the Intellectual Property Office (IPO) publishes the trademark you have applied for in the Trade Mark Journal and invites any opposition or challenge to the trademark being registered. This stage should not present any issues if the relevant enquires have been undertaken into potential infringements and passing off issues. However, if the IPO were to notify us of any opposition or challenge then we would be able to advise and guide you through the next steps.

If no opposition or challenge is raised during the Publication Stage, then the trademark will automatically be registered.

If you need help registering a trademark, or you believe that someone may be infringing a trademark which you have already registered, please get in touch with our experienced solicitor, Matt Spencer.