Trade Mark Registration - v - Trade Mark Use

Author:Ms Emma Lambert
Profession:Pictons Solicitors LLP

The best method of protecting your brand against copying and 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 MAIL; DAILY MAIL; and MAIL 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...

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