Although it is much easier to enforce a trade mark if it is registered, it is also possible to seek damages for the common law tort of “passing off”, regardless of whether the trade mark has been registered.

There are three elements which must be proven in a claim for passing off:

• that the owner has goodwill in the name or mark
• a misrepresentation has been made leading the public to believe the goods or services supplied by the defendant are those of the claimant
• damage has been caused, or is likely to be caused, to the claimant by the erroneous belief (such as a loss of business or profits).

Goodwill means the value of the reputation of the trade mark established through its use over a period of time. Damage to the claimant can include a dilution of that goodwill, as well as lost profits due to sales by the business passing of its products as those of the claimant.