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The recent case of Media Agency group Ltd, Transport Medial Limited v Space Media Agency & Ors [2019] shows the implications that may arise from unused registered trade marks.

In this particular case a business had registered a trade mark in relation to a new product that they were developing.

Two years after the trade mark had been registered, a competitor company was set up by two former employees who had set up a domain name very similar to that of the trade mark registered by the business. The business therefore brought a claim against the two employees for passing off.

In order to succeed in a claim for passing off the business would need to show the following:-

  • there was goodwill attached to the trade mark i.e. it had a good reputation;
  • the trade mark was associated to the business;
  • there has been a misrepresentation by a third party which has lead or may lead the public to confuse the third party’s goods or services with those of the business; and
  • the business has suffered damage or loss due to the third party’s use of the trade mark.

Unfortunately, the Court of Appeal held that the business could not satisfy the above and although it had taken steps to register the trade mark, the trade mark was not used and therefore it had not developed sufficient goodwill.

It is therefore important for businesses to review the trade marks that they have registered and consider how they can be used to avoid the risk of being unable to bring a claim against a third party for using a similar trade mark. Failure to do so could result in a negative impact on the business long term.

If you have an Intellectual Property issue you would like to discuss, please do give us a call on 01484 821 500 or email info@ramsdens.co.uk.

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