Not all trade marks are registered. Until a trade mark is registered, it exists as an unregistered trade mark. Rights can subsist in that mark, which can be enforced through an action for ‘Passing Off’.
As the name suggests, an action for Passing Off exists where Party B seeks to pass themselves/their goods/services off as those of Party A, or give the impression that they are connected to Party A in some way. This deliberate misrepresentation will invariably cause damage to Party A’s reputation.
A claim for Passing Off requires evidence of goodwill and reputation in a mark, whereas the infringement of a registered trade mark is judged generally upon a comparison (similarity) of the registered mark to that of the alleged infringer (mentioned later in this note). Therefore, a Passing Off action can be more expensive to bring than a registered trade mark claim.
The protection afforded by unregistered trade marks however can be wider than registered marks; protection can extend to the general appearance and ‘get-up’ of a website (its style, colour scheme etc.). Therefore there is often a strategic decision to be made as to how a claim should be brought against an infringing party.