États-Unis d'Amérique

Royaume-Uni

Marques de fabrique ou de commerce

[Follow-up question from the US] What are the elements that must be shown by the owner of an unregistered well-known mark in order to prevail in an action to protect its mark under the common law tort of passing off prior to the passage of the 1994 Act? For example, must the owner of the well-known mark have used the mark in the United Kingdom? Must the owner of the well-known mark have goodwill in the mark in the United Kingdom? Are there any recent reported cases on this matter?

To protect its mark under the common law tort of passing off, the owner of an unregistered well-known mark would have to show the following three elements: misrepresentation (which need not be intentional), reputation (sometimes expressed as "goodwill") and damage. The courts in the United Kingdom have given no specific guidance concerning whether a well-known mark must be used in the United Kingdom, or whether the owner of the well-known mark must have goodwill in the United Kingdom. The court will consider each individual case on its merits, according to the specific facts. We are not aware of any recent reported cases on this matter.