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To ensure maximum protection of a trade mark it is preferable to seek registration, which will confer absolute rights on the trade mark owner and greater certainty of recourse in the event of an infringement.

However, it is possible to protect an unregistered trade mark through the law of passing off, which is common law tort (i.e. there is no relevant statutory provision). The offence is predicated on the fact that no individual can pass off his goods as the goods of another (as decided in the seminal case of Reddaway v Banham [1896]). The purpose of the tort of passing off is to protect the goodwill in a brand that a business has generated.

There are three essential ingredients to a successful passing off action:

Goodwill in a trade name attached to goods or services acquired through use.

A misrepresentation by the defendant that deceives the public as to the origin of goods or services.

Damage (actual or likely) to the established goodwill will result because of the misrepresentation.

Referred to as the “classic trinity”, these principles were set out definitively by the House of Lords in the case of Reckitt & Colman Products Limited v. Borden Inc. [1990], and have been restated in subsequent case law.

‘Goodwill’ is ostensibly an ambiguous phrase, but it has been defined by the courts as “the attractive force that brings in custom”(IRC v Muller (1901)). It is the value that a brand gives to a product that makes consumers more likely to purchase it over competing products. It is necessary for the existence of goodwill, misrepresentation and damage to be proved; thus, in demonstrating that goodwill in a product exists and that misrepresentation and subsequent harm have occurred, evidence will have to be adduced. Such evidence will often take the form of consumer surveys, the compiling of which can be costly and protracted.

For these reasons it will usually be advisable to seek registration of a trade mark as opposed to relying on the law of passing off, which offers considerably less certainty.