Trademarks – are they worth registering?
As Boating Business has previously reported, Hanse Yachts recently obtained preliminary injunction against an Italian imitation of its Fjord motor boats. The case essentially revolves around trademarks. Technology lawyer Dai Davis of Percy Crow Davis & Co argues that UK businesses should register their trademarks as these are valuable and can protect the intellectual property that a business creates.
For centuries, English common law has protected a business in circumstances where another company tries to confuse the public into thinking that it is the first business to develop goods or services - known as the law of ‘passing off’ or the law of unregistered trademark rights.
The claimant must prove the defendant misrepresented the goods or services as those of the claimant in such a way that the public has been, or is likely to believe, that the defendant’s goods or services are those of the claimant; that the claimant has some goodwill attached to its goods or services through a distinguishing feature and that the claimant has suffered or is likely to suffer loss or damage.
This can often be difficult and expensive to prove.
Where a trademark has been registered and infringed, the rights owner will not have to prove there has been any misrepresentation or confusion.
In an unregistered trade mark case, a claimant is often forced to obtain survey evidence even before court proceedings begin, which can cost tens of thousands of pounds. It is far better to register a trade mark at a fraction of that cost as a failsafe against any potential action in the future. In many respects, registration is a case of ‘a stitch in time saves nine’.
Countries that follow a continental law pattern often have rights in ‘unfair competition’. Although this is radically different from passing off, in many instances the result of disputes is often the same: namely to give the right to one business to stop a second business making its product or service appear like the product or service of the first business.
Registering a trade mark is easy and the cost is quite modest at a few hundred pounds per country. Registration is limited to a particular type of goods and services. So, for example, the same trade mark can be registered by completely separate owners for winches and navigation lights. Once one has registered a trade mark, all one has to do to prove infringement of a registered trademark is to show that the registered trademark has been used for the same goods or services.
Registration offers extended protection to the use of the registered trademark for similar goods and services; use of a similar trademark for the same goods and services or even use of a similar trademark for similar goods and services. However, in these latter circumstances the owner of the registered trade mark also needs to show there has been confusion in the market place.
By registering the trademark, the owner will be able to protect his core business from others who try to trade off the back of his reputation. Even for the smallest of businesses, trademark protection should be considered. Of course, some businesses may have several trademarks: not only a trading name but also different brand names for their products and logos.
For a claimant who successfully brings proceedings, whether for a breach of registered or unregistered trade mark rights, the primary relief will be given in the form of monetary compensation. The compensation is usually damages, although as an alternative the claimant can elect for an ‘account of profit’. In addition, the claimant can ask the court for an injunction to prevent the breach of registered or unregistered trade mark rights continuing or being repeated.
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