What if someone else is using my trade name?
A trading name or business name is the name used by either a person, partnership or a company under which business is carried out which is not the same as their own name.
There are no intellectual property rights in a trade name, but it is possible to register the trade name as a trademark and receive the protection under the Trade Marks Act 1994.
If your name has not been registered as a trade mark, and you notice that someone else is operating under the same or similar trade name then you can be protected under the law of ‘passing off’.
What is passing off?
There is a potential for an action for ‘passing off’ if someone or a business, passes off another business’s goods or services to deceive or confuse customers. Passing off protects the goodwill attached to a trade name or business and can also be used to protect slogans and logos.
By way of an example, in 1996, a court restrained the defendant from using the name “Neutralia” by finding that it was sufficiently similar to the claimant’s brand “Neutrogena”.
Bringing a claim for passing off
In order to bring a claim for passing off, you must be able to prove:
- That you have a reputation or goodwill in your trade name. Goodwill can encompass many attributes such as the commercial advantage of the name, reputation and connection of the business. It is the “attractive force which brings in custom”.
- That there is misrepresentation with the potential to cause confusion amongst ordinary members of the public that the defendant’s goods or services are those of the claimant.
- As a result, it has caused damage. This could be shown by way of diversion of sales or loss of sales or damage to reputation for example.
Seeking damages
If proceedings become necessary, the remedies available to you include an injunction, delivery up or (at your option) destruction of all offending items, damages or an account of profits, legal costs and interest. In the meantime, your reserve all its rights in the matter.
If your company is facing issues similar to this and you need help preserving your commercial integrity and brand, get in touch to see how we can help protect your business.
