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Brand Appeal
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February 2026
Is that right? A few common misunderstandings as to UK trade mark law and procedure.
Background
UK trade mark law and procedure is complex and nuanced.
It takes many years to ‘learn the art.’
During that time, practitioners come to realise it is often less straightforward than they might initially assume it to be.
We thought it would be helpful to share with our readers three common misunderstandings, so that they are better informed when it comes to our trade mark law and procedure:
Q: Unless people in real life are confused, then surely there is no likelihood of confusion?
A: This is a common misconception.
The failure to file evidence before the Registry or a Court to prove that the public is confused by two marks is often not decisive of the issue.
For example, it is possible to register a mark which is not yet being used. In such a case, there can be no confusion in the marketplace, yet it is possible for there to be a finding of infringement based on a likelihood of confusion.
Further, the proprietor of a registered mark may have only used it on a small scale, for a small period of time and the alleged infringer’s use also may be limited in scale and/or time. In other words, there has not been a real opportunity for direct competition (and, thus, confusion to arise) between the proprietor’s use of its mark and the alleged infringer’s use of its mark. Such a scenario would not prevent a finding of infringement based on a likelihood of confusion.
Of course, if there has been a long period of side-by-side use, and substantial effort has been put into finding evidence of actual confusion arising in the marketplace and none is found, then in those circumstances, if there was a likelihood of confusion, one would expect evidence of confusion to have been found. Thus, in that scenario, a Court might conclude there is no likelihood of confusion arising.
Q: If there are lots of earlier, similar, registered trade marks on the UK TMs register, surely I should be able to co-exist with them, use, and register my similar mark for the same goods/services?
A: This is another common misconception. If only it were that simple.
Case law has established that ‘state of the register’ evidence is rarely given much, if any, weight, when it comes to assessing whether there is a likelihood of confusion between two marks.
However, if there are lots of similar marks being used in actual trade in the UK marketplace, all for the same or similar goods/services, this might support an argument that consumers are used to differentiating between them and not being confused, such that the addition of another similar mark into the marketplace will not lead to a likelihood of confusion. However, such an argument is unlikely to succeed without credible and substantial evidence of average UK consumers awareness of the marks in issue and their understanding that they are owned by different proprietors.
What can be safely said is that if the only similarity between two marks is a common element which has low distinctiveness, this will point against there being a likelihood of confusion. However, a finding that two marks have a common element with low distinctiveness does not preclude a finding of likelihood of confusion. Each case has to be considered on its own merits. There is no fixed rule.
Q: As the UK operates a first-to-file trade mark registration process, so as long as I register first then I own the mark, and no-one can stop me from using it.
A: Unfortunately, this is not the case.
In the UK, unregistered IP rights holders may be able to prevent a trader from using its registered trade mark, in trade, in the UK.
For example, a trader may have used an unregistered mark in trade in the UK, and thus generated ‘goodwill’, such that if someone were to start using the same or a similar mark it might cause a misrepresentation as to who is responsible for the goods/services being supplied under the mark, leading to damage and loss. This would entitle the trader to file a claim against the registered trade mark owner for the tort of ‘passing off.’
Further, a logo mark might infringe copyright in a graphic work owned by a third party, if the mark is a copy of the whole or substantial part of the said work. Thus, use of the mark may be prevented via a successful claim of copyright infringement.
Lessons learned
Never underestimate the need to obtain specialist advice from a chartered trade mark attorney or solicitor when it comes to issues of UK trade mark law and procedure. The devil really is in the detail.
January 2026
Ambush marketing
What is it?
These days, all major sporting events and competitions have official sponsors and product and service providers.
Brand owners are willing to pay considerable sums for the privilege of being called the same. Without these revenue streams, many events and competitions would not be financially viable in their current forms.
Whilst some brand owners wish to associate themselves with an event or competition, others are either unwilling or unable to afford to pay the considerable sums asked by event organisers. Or they discover a rival brand has become an official sponsor or provider and they want to devalue and dilute their rival’s exclusive rights. Thus, they look to engage in ‘ambush marketing.’ Through their marketing efforts, they attempt to associate their brand with the event or competition, but without paying the organisers for the privilege.
Sometimes they can be so successful that the public think they are an official sponsor or provider. For example, during the 2000 Olympics, held in Sydney, Australia, Ansett was the official airline sponsor. Its larger rival, Qantas, promoted itself during the games by sponsoring local athletics star Cathy Freeman, and ran a print and television advertising campaign featuring her. Polls showed that a substantial number of people thought Qantas (and not Ansett) were the official airline sponsor of the games.
Other examples from the past
At various FIFA World Cups brand owners have engaged in ambush marketing activities.
For example, at the 2010 World Cup the Dutch brewery Bavaria hired a group of women to wear Bavaria branded mini dresses when attending the Netherlands versus Denmark match.
At the 1998 World Cup Nike bought up large numbers of advertising hoardings close to the host venues. They were not an official sponsor.
During the 1996 Olympics, at a press conference the 1992 men’s 100m athletics sprint champion, Linford Christie, wore blue contact lenses, embossed with Puma’s logo in the centre. The official sponsor of the games, Reebok, was not best pleased.
What can be done to try and stop it?
These days, event organisers are wise to the activities of ambush marketers and seek ways to prevent them diluting the rights of official sponsors and product and service providers.
For example, the IOC requires host cities to prevent unofficial commercial activities taking place at or near to venues, with official sponsors being granted exclusive use of all advertising locations within a certain distance of a venue.
The Olympic Charter bans those competing at the Games from engaging in marketing activities for companies that are not official sponsors for several days before the Games begin, whilst the Games take place and for a number of days after the Games end.
As host of the London 2012 Olympic Games, the IOC required the UK to pass a law preventing unauthorized persons from associating themselves with the Games. The London Olympic Games and Paralympic Games Act 2006 created The London Olympics Association Right, which enabled the organising committee to go to Court to prevent the creation of an unauthorised association between people, goods or services and the London 2012 Olympic Games.
Also, broadcasters of an event can be contractually obliged by the organiser to give official sponsors of the event a right of first refusal to purchase TV advertising slots during the broadcasting of the event. The organisers of the UEFA Champions League keep a very tight control on what broadcasters can offer to those who are not official sponsors of the League.
Final thoughts
If you are, or represent, a brand owner who is considering becoming an official sponsor of or provider to a major event or competition, before you or your client pays over considerable sums for the privilege, make sure the organisers have taken all appropriate steps to prevent a rival brand ambushing your marketing efforts.
If you, or your client, do not want to pay for the privilege of being officially associated with an event or competition, make sure that whatever plans you or they have to ‘ambush market’ stay on the right side of the law.
December 2025
Get it right or lose the lot – the importance of correctly defining your trade mark when filing an application
Background
In the UK, to be able to register something as a trade mark it must first be a ‘sign.’ Secondly, the ‘sign’ must be ‘capable of being represented graphically’.
Case law has established that if the filed application embraces a multiplicity of signs then it does not comply with the first condition. Further, to comply with the second condition the sign in question must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
BABEK INTERNATIONAL LIMITED v ICELAND FOODS LIMITED
In this recent case, the Court of Appeal was asked to assess whether the respondent’s registered UK trade mark met the above criteria. It comprises the pictorial representation shown below:
In addition, when the application to register the trade mark was made, the form was completed as follows:
“Type of mark figurative
Representation of the mark attached
Colour claimed
Indication of colour(s) Gold and Black
Description of the mark Gold Oval with Embossed BABEK writing”.
The Appellant argued that the trade mark does not comply with either the first or second condition mentioned above. In particular, because the written description is not consistent with the pictorial representation, and it gives rise to ambiguity and doubt about what is the subject-matter of the registration.
What did the Court decide?
It confirmed that, when interpreting a trade mark, the court should consider each of (i) its categorisation by the applicant (in this case, as a “figurative mark”), (ii) the pictorial representation of the mark, and (iii) the written description. None of these three elements should be given precedence over the other.
In this case, contrary to Iceland’s case, the Court held that the trade mark complies with the first condition because it is a single sign, namely the sign depicted in the pictorial representation. The written description is not inconsistent with the pictorial representation, nor does it give rise to any ambiguity or doubt about what the subject-matter of the registration is. The trade mark also complies with the second condition, because it is clear and precise. The reasonable reader would understand the written description to be an attempt concisely to describe what is depicted in the pictorial representation. As the Court said, the applicant could have put this beyond any doubt by including the words “as appears in the representation of the mark attached” in its written description.
THOM BROWNE INC & ANOR v ADIDAS AG
In this second recent case, the Court of Appeal was asked to assess whether eight of the respondent’s registered UK trade marks met the above criteria. By way of illustration, one of the marks in question was as follows:
| Pictorial representation | Written description |
 |
The mark consists of three parallel equally spaced stripes applied to an upper garment, the stripes running along one third or more of the length of the sleeve of the garment. |
What did the Court decide?
Whilst it is possible to register a ‘position mark’ as a UK trade mark (i.e. where their distinctive character derives at least in part from their positioning. For example, the red tab positioned near the top left corner of the right-hand rear pocket of a pair of Levi’s jeans), the eight registered marks were invalid because the written descriptions envisaged the possibility of several different marks. For example, the written description states “the stripes running along one third or more of the length of the sleeve of the garment”. As the Court said, that description not only encompasses variability in the starting points, ending points and length of the stripes, it also encompasses variability in their position upon the sleeve. Thus, there was no single sign, such that the first condition was not met. Nor was the second condition met. The trade marks were insufficiently clear, precise and objectively ascertainable.
Lessons Learned
When filing trade mark applications for figurative and position marks it is crucial to define them such that they meet the two conditions. Failure to do so can result in either a failed application or an invalid registration, which is vulnerable to invalidation if the owner looks to enforce it via infringement proceedings – which was the scenario in the Thom Browne case.
November 2025
Mercky business – claiming damages for UK registered trade mark infringement
Background
In the UK, a registered trade mark owner whose mark has been infringed is entitled to compensation. Typically, they elect either to claim damages, for the loss they have suffered because of the infringement, or for an account of the profits made by the infringer.
When claiming damages, often they assert they have lost sales, and thus profits, because of the infringer using the infringing mark to generate its own competing product or service sales.
However, sometimes the trade mark owner seeks damages based on a reasonable royalty, under a notional (fictional) licence (hypothetically) negotiated between the parties, permitting the infringer to perform the infringing acts. Such compensation is known as “negotiating damages” or “user damages”. The Court determines what sum would have been arrived at in negotiations between the parties, had each been making reasonable use of their respective bargaining positions, bearing in mind the information available to the parties and the commercial context at the time the notional (hypothetical) negotiation should have taken place. The negotiation is assumed to have resulted in a licence that would cover the infringer’s trade mark infringements.
One of two approaches can be used to calculate the notional licence fee:
- A comparables approach, where the sum or royalty rate which would have been agreed under the notional and fictional licence is determined by the Court by reference to similar licences (if any) already in existence; and
- An economic benefits approach, where the sum or royalty rate which would have been agreed under the notional and fictional licence is determined by reference to the incremental economic benefits expected to be obtained by the infringer through its use of the infringing trade mark in issue, and the costs to the trade mark owner because of granting the rights under the licence. The economic benefits (and avoided costs) of the infringer sets a ceiling. From the trade mark owner’s perspective, the grant of a licence to the infringer might harm the trade mark owner’s business. That loss establishes a floor. The usual approach is for the Court to establish where between the floor and ceiling the amount of the notional licence fee should fall.
MERCK KGaA v MERCK SHARP & DOHME LLC & Ors
In this recent case, the Court was asked to assess damages based on a reasonable royalty under a notional (fictional) licence (hypothetically) negotiated between the parties, permitting the infringer to perform the infringing acts.
Initially, the claimant asserted it was entitled to damages of approximately £50.5m, relying on its analysis of (allegedly) comparable licences already in existence. Alternatively, based on the economic benefits approach, it claimed damages of around £18.7m.
What did the Court decide?
The infringer’s expert asserted there was no evidence before the Court of a reliable comparable licence, and no adjustments to a non-comparable licence would lead to a reliable royalty. The Court agreed. There was no evidential support for the adoption by the Court of any sum pursuant to a comparables analysis: “Any attempt to do so would be nothing more than wild speculation.”
Thus, the Court determined the notional licence fee via an economic benefits approach, calculating it as just over 10% of the originally claimed sum of £50.5m.
Lessons learned
Whilst English law does permit a trade mark owner to obtain damages against an infringer, based on a reasonable royalty under a notional (fictional) licence (hypothetically) negotiated between the parties, credible evidence needs to be filed with the Court to support the figure sought. This is especially so where the sum or royalty rate claimed is by reference to allegedly similar licences already in existence.
October 2025
Lost Mary, found rights: What brand owners should know
Even the strongest trade marks can lose to resellers online, as the LOST MARY case shows.
A recent UDRP decision over the domain name, lostmarydirect.com, highlights the fine line between trade mark rights and reseller rights. Despite holding an extensive global registered trade mark portfolio, the owners of the LOST MARY vape brand (launched in 2022) lost their complaint against a non-licenced and unofficial 3rd party reseller, who registered the domain name lostmarydirect.com in 2023.
The dispute
- Complainants (Dashing Joys Ltd. & Imiracle (Shenzhen) Tech): Argued the domain name was confusingly similar to their registered trade mark, misled consumers, and was registered in bad faith. They further alleged unfair exploitation of their goodwill and requested transfer of the disputed domain name.
- Respondent: Showed he was reselling only genuine LOST MARY products, providing distributor invoices and disclaimers stating no affiliation with the Complainants. He relied on the long-standing Oki Data Americas, Inc. v. ASD, Inc. (2001) (hereinafter referred to as “Oki Data”) precedent, which allows resellers to incorporate 3rd party owned registered trade marks in domain names under specific conditions
The Panel’s move: From Oki Data to Lost Mary
The Panel acknowledged that LOST MARY is a strong trade mark (it is not descriptive as to the nature of the goods sold under it) and that the domain name was indeed confusingly similar. .
The real question, however, was whether the respondent could show a legitimate interest in the domain name. Under the traditional Oki Data test, this requires: 1) offering the goods in question, 2) selling only those trade marked goods, 3) clearly disclosing the reseller’s relationship (or lack thereof) with the brand owner, and 4) avoiding domain name cornering / hoarding.
Here, the Panel modernised Oki Data, noting that today’s consumers are more internet-savvy and can spot the difference between genuine official brand sites and reseller sites. A disclaimer helps but is no longer essential. What matters is clear distinction.
The Panel updated the Oki Data test and introduced what it termed the “Lost Mary criteria” for reseller domains:
- The website sells genuine trade marked goods.
- It sells only the brand owner’s trade marked goods.
- It is clearly distinguishable from the official brand website (through disclaimers, design/look and feel, or other means).
- No attempt at domain name cornering / hoarding.
Applying this, the respondent’s orange, price-driven reseller site was found sufficiently distinct from the brand owner’s sleek purple site.
Key takeaways
- Evolving Doctrine: This decision marks a softening of strict Oki Data application. Panels may now accept broader indicators of distinction beyond disclaimers alone.
- Reseller Rights: Genuine resellers who play fair may own and use domain names incorporating brand owners registered trade marks.
- UDRP Limits: Designed to stop cybersquatting, not to police reseller relationships.
- Strategy for Brand Owners: Tighten distribution contracts and consider parallel enforcement (e.g., under national trade mark laws) rather than relying solely on UDRP to address unauthorised reseller domains.
Conclusion
Trade mark owners can (and should) pursue counterfeiters and cyber squatters using the UDRP but overreaching against bona fide resellers risks backfiring.
The Panel reminded complainants that the UDRP was designed to combat cybersquatting, not to police the entire reseller landscape. If brand owners want tighter control of 3rd party domain names registered by resellers of genuine branded goods, the remedy lies in enforcement via local registered trade mark infringement laws, not the UDRP.
The UDRP is not a substitute for courts.
September 2025
Natasha Courtenay-Smith & Notting Hill Bag Company Ltd v The Notting Hill Shopping Bag Company Ltd & Ors [2025] EWHC 1793 (IPEC) – the importance of getting your ducks in a row!
This month we are considering an interesting case heard recently by the Intellectual Property Enterprise Court, which concerned the IP rights in a brand name and logo used on tote bags.
Facts of the case
In summary, the claimants issued legal proceedings against the defendants, alleging, amongst other things, that they had infringed the second claimant’s registered UK trade mark by using similar signs on identical goods, namely tote bags.
Details of the second claimant’s trade mark and the defendants’ (allegedly infringing) signs are set out below:
What did the Court decide?
The second claimant did not own a valid registered UK trade mark and therefore the defendants could not infringe it. The claim failed.
Originally, the registered UK trade mark was owned by another company (X’), which had been dissolved after the first claimant applied to have it voluntarily struck off. Its assets at the time of the dissolution, including the registered UK trade mark, automatically passed to and vested in the Crown. This is known as ‘bona vacantia’ and means that ownerless property (e.g. the assets of a dissolved company) passes by law to the Crown.
Subsequently, the first claimant applied to have X restored, to transfer the registered UK trade mark to the first claimant, who in turn would assign it to the second claimant. However, before X was restored the registered UK trade mark expired. The Crown did not renew it and nor had it authorised anyone else to renew it on its behalf. There was therefore no trade mark to be revested or restored to X when the restoration order was made.
Without authority or permission from the Crown, the sole director of the second claimant had purported to renew the trade mark before it expired. However, because he had no authority from the Crown, or other valid legal basis to do so, the purported renewal was void/a nullity. Only the Crown would have been able to renew the trade mark or give authority for someone else to do so. Thus, the registered trade mark had expired, and the second claimant had no standing to bring a claim of registered trade mark infringement against the defendants.
Lessons learned
Details matter! Before commencing infringement proceedings, a claimant and its legal advisers need to check and ensure it legally owns the IP rights it asserts have been infringed. Otherwise, its claim will fail. Not only will it have wasted money on its own legal fees, but it will also have to pay the defendants’ costs for successfully defending the claim.
The case also highlights the need to ensure that before a company is dissolved any assets it owns, including registered IP rights, such as trade marks, are assigned out to a third party, who can then own, manage and renew them. Failure to do so means they can be inadvertently lost for all time.
Need assistance?
This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.