What is Trademark Infringement and Passing Off?
A trademark is infringed where a person, without the consent of the proprietor, uses in the course of trade a sign that is identical with or similar to a registered trademark in relation to goods or services which are identical with or similar to those for which the trademark is registered, where such use is likely to cause confusion on the part of the public.
Where a trademark is not registered, protection may still be available under common law passing off. This arises where a person, as the first user of a trademark, has acquired goodwill in that trademark through use in the course of trade. On this basis, the law protects such goodwill against misrepresentation by third parties. To succeed in a passing off claim, it is generally necessary to establish that (i) goodwill has been acquired in the trademark, (ii) there has been a misrepresentation by the offending party leading or likely to lead the public to believe that its goods or services are those of, or are associated with, the claimant, and (iii) damage has been or is likely to be suffered as a result of such misrepresentation.
In today’s competitive marketplace, once products are commercialised, the risk of imitation or encroachment becomes a real concern. However, what matters is whether businesses are sufficiently protected and strategically prepared to respond. At Huei Sze & Co, we assist our clients in safeguarding their intellectual property rights by putting in place appropriate protection strategies together with active portfolio management, to ensure that clients are well-positioned to address unauthorised use, infringement, and misuse in the marketplace. Our approach is both strategic and commercially driven. We take into consideration each client’s strengths and vulnerabilities and advise on the most suitable enforcement strategy. This may include issuing cease-and-desist letters, engaging in without-prejudice negotiations, exploring settlement or commercial resolutions, and where necessary, initiating legal proceedings. Where appropriate, we also work closely with the relevant enforcement authorities in relation to raids and border control measures to prevent the circulation of infringing goods.