Can someone enforce or defend their unregistered IP rights even if their opponent has a registered trade mark?
The short answer is yes, but in true lawyer fashion, it depends on the circumstances.
Whilst we would always advise you seek trade mark protection for your brand or products, there are a number of ways to defend or enforce your unregistered rights, even if you come up against another party who does have trade mark protection.
As described in previous “Is it ok?” articles, under the Copyright, Designs and Patents Act 1988, copyright protection is gained by the creator on a permanent expression of a piece of work, logo or design. Therefore, should a competitor or third party copy the style or wording of your creation or brand, you might have a cause of action under copyright.
Another useful IP rights claim is “passing off”. This is a common law right which protects the goodwill – or reputation – in the “get-up” – or appearance – used for a particular product or service. The key to a passing off claim is demonstrating prior goodwill and that confusion is created by the infringer’s actions. This can be utilised by those with or without registered IP rights.
The last option to consider is the enforceability of trade marks under the Trade Marks Act 1994 (TMA). A situation can arise in infringement cases, the likes of which BrewDog faced, described below, where prior registered rights in a name or sign can restrict the enforceability of a later trade mark.
Under Section 11(3) of the TMA, a trade mark owner cannot prohibit another party from using, in the course of trade, an earlier right in a sign or name continuously used in relation to its goods or services.
For example, if you’ve benefitted from trade mark protection of your businesses name or logo for six years, but another business – even if they’re in the same industry as you – has been operating under a an identical or similar name branding for ten years, you’ll be unlikely to succeed in an infringement claim against them.
For registration purposes, trade mark protection works on a first-come, first-served basis. If you are a business with a registered mark or unregistered logo, the best way to prevent another business from registering an identical or similar trade mark and infringing your rights in a name or logo is to make an opposition to their trade mark application.
BrewDog and Jump Ship Brewing
This is an argument BrewDog, the multinational brewery and pub chain, shared in a press release following the announcement it was being sued by Jump Ship Brewing.
In short, Jump Ship Brewing is a non-alcoholic brewery which was founded in Edinburgh in 2019. It has been producing a series of beers called Shore Leave since mid-2022. BrewDog launched its own “Shore Leave” amber ale in September 2023, announcing its launch in July 2023, under the tagline “It’s time to jump ship”.
In this situation, both Jump Ship Brewing and BrewDog have registered trade marks. BrewDog for “Shore Leave”, filed in March 2023, and Jump Ship Brewing for “Jump Ship” filed in April 2019.
BrewDog’s vindication was that, had Jump Ship Brewing taken offence to its use of the name “Shore Leave”, it had the opportunity to oppose the registration. It didn’t, but instead now brings a claim for infringement for the use of ‘jump ship’ and ‘shore leave’.
Jump Ship Brewing could argue that it has prior unregistered rights over the name Shore Leave having used name since mid-2022 and has trade mark protection over the phrase “Jump Ship”.
BrewDog is right to raise the point that Jump Ship Brewing could have opposed its trade mark application but this does not mean it can’t enforce its rights under Section 11(3) of the TMA. It might be open to Jump Ship Brewing applying to invalidate BrewDog’s trade mark for “Shore Leave” on the basis it had an earlier right.
It is possible that BrewDog refrained from filing a trade mark application for Jump Ship because it was aware of Jump Ship Brewing’s pre-existing trade mark and whilst being in the same industry, was aware that it would be unsuccessful in registering an identical mark for identical goods. In this situation, Jump Ship Brewing had got there first and was protected against competitors using the same name or phrase.
As shown, an unregistered IP owner can seek to enforce its rights against a registered trade mark but to prevent being in this position it is advisable to both sides that you are diligent in searching for potential competitors already operating under that name or phrase. Equally, you should keep up to date with what your potential competitors are up to, and object to registrations when you have the opportunity. If one slips through the net, the party who can evidence earlier goodwill in the market will likely prevail.