Trade Mark Registration - v - Trade Mark Use

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...