We are concerned that a competitor is copying our brand in order to gain our custom. We do not have any registered trademarks. What can we do?
Of course registering marks, to include names and logos, puts a party in the strongest possible position to deal with any copycatting. However, even in the absence of registrations, the law offers some protection to businesses through the common law tort of passing off.
The purpose of this tort was nicely summarised in the case of Perry v Truefitt which stated that ‘A man is not to sell his own goods under pretence that they are the goods of another man.’
To bring an action for passing off you must demonstrate goodwill in your business and show that the other party is misrepresenting its goods or services as being the same as or related to yours and that this has caused or is likely to cause damage to your goodwill.
The damage element will generally require confusion in the minds of customers, either at the point of sale or after sale. The greater the similarities between the products or services offered the more likely confusion becomes. However in specialised fields, especially those which are high end or part of a professional market, consumers are likely to shop carefully and have in-depth knowledge of the market. They are, therefore, less likely to be confused.
In the case of L’Oréal SA v Bellure NV  Bellure sold ‘knock off’ perfumes with similarities to the smell of L’Oréal’s perfumes. Even though there was no confusion at the point of sale, as consumers knew what they were buying, it was found there was post sale confusion and, therefore, unfair advantage.
In the recent case of Moroccanoil Israel Limited v Aldi Stores Limited  Judge Hacon took the view that Aldi created a product which brought the other product to mind, but that this, in itself, was not unlawful.
The likely outcome of your case will depend on the facts specific to your case. You may well have a strong action in passing off, however a detailed legal opinion should be obtained prior to embarking on litigation.
While great care has been taken in the preparation of the content of this article, it does not purport to be a comprehensive statement of the relevant law and full professional advice should be taken before any action is taken in reliance on any item covered.