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Written by : Lorrine Castilleja
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here's a great question from Teddy Halil e our subscriber on YouTube the question is to what extent ownership of a registered trademark provides a defense to a claim for passing off that's a great great great question and I'll go in detail to explain what this actually means what the repercussions are but before I do that my name is Andre man cuff I've done hundreds of videos just like this one and I'm planning to do many many more so if you have an interest in learning more about trademarks about intellectual property about branding about what makes a brand great about entrepreneurship make sure you subscribe to get notified whenever the next video goes live if you've got a question for me that's really how I generate ideas for videos like this one make sure you post the comment below and I'll try to answer your question now to Teddy's question well to what extent does ownership of a registered trademark provide a defense to a claim for passing off you'll find out in just a moment alright first of all what is a claim for passing off though before there were laws statutes about trademarks and common-law countries like us like UK Canada there were common law rules that are common law common law rules for passing of that would allow owners of brands that you couldn't register as trademarks because there were no trademarks back then to still stop their direct competitors from stealing their brands and taking a free ride on the reputation of a good name so those were called passing off and the idea behind those laws was that you couldn't take your products and pass it off as the product of somebody else but you couldn't just slap a logo over your competitor and say hey buy buy this product so that everyone would think it's that famous brands behind it whereas it wasn't so that was called passing off and then they introduced statutory protection for trademarks right the trademark act in Canada Langham will act in the US but the idea was that in addition to common law protection for unregistered trademarks there there was now a possibility to register your trademark and secure your brand through registration and so when you register a trademark your trademark certificate provides you the presumption of ownership and validity it's a rebuttable presumption so here's what this means it means as unless somebody can prove otherwise the owner of a registered trademark is deemed to be the owner of a valid mark right so the two presumptions the first presumption is that the mark is a valid trademark unless again somebody can successfully rebut that presumption and also the second presumption is that the person whose name appears on the certificate of registration is the rightful owner of that valid trademark now if there is a case of passing off against the owner of a registered trademark it starts the same way as any other claim in passing off the owner of the unregistered brand first needs to show that they've got a brand that's the hardest part about unregistered trademarks because in common law countries yes you can do something with unregistered rings this is just freakin difficult and super expensive so first thing they need to do is establish that they've got a brand that requires surveys that requires expert evidence that requires documents you just have to show to the court that your brand is known to significant number of people for specific type of products or services that come from you so assuming you establish that that's the first thing you need to establish with a claim of passing off the second thing you need to establish is that the defendant the person or the company you're suing is offering similar products and services to yours under a similar brand in the same geographical area where your brand is known and they do it without your permission so if you can show all of that then that beats the presumption that the defendant would have with the with the trademark for nutrition as long as you have a private right but and as long as of their trademark is not an incontestable trademark and as long as there's and as long as you know they didn't register their trademark through fraud and as long as they didn't they didn't register their trademark knowing about you so there's a million things here the problem the problem with that is proving all of that requires a lot of resources so if you are a owner of a registered trademark is it a hundred-percent guarantee that there is no other firm out there that could sue you for passing off no but the risk of that is minimal because the idea is very simple if they didn't bother to trademark their brand when it was easy and inexpensive the risk of them finding fifty seventy hundred thousand dollars to go after you with their unregistered trademark with a claim for passing off is almost non-existent so could they do it maybe but very very very very unlikely that's why that's holy I do that's you got this whole idea of rebuttable presumption right that unless that presumption is rebutted by evidence by arguments that the court agrees with that presumption stands but it's not iron clad it could be it could be rebutted if they prove otherwise so that's that's that's how it works so if you got a registered trademark unless somebody goes after you and cancels that trade market because they can prove to the judge that the the trademark was registered improperly you're the owner you're the owner even if everyone understands that this trademark should not have been registered until that's actually formalized in you know any decision the owner of a trademark is the owner of a trademark so I hope this answers your question and make sure you like this video make sure you post a comment below if you have additional feedback or if you have a question for me that you want me to answer and we'll just go from there right and until then I'll see you in the next video in the next video I will see you off sure
Thanks for your comment Stephenie Tredennick, have a nice day.
- Lorrine Castilleja, Staff Member
hello my name is um talo fear i'm a partner at decker and of fear law firm we provide intellectual property legal services and today i want to speak with you about uh trademark infringement um so there are a lot of uh trademark owners um that um that own a trademark but the headquarters of the company are not in israel and um the products are being um marketed by an importer or a distributor but the ip rights belong to the owner of the trademark which is who is i'm outside of israel and a lot of times the distributor or your importer advises the owner of the trademark that um that the trademark is being infringed by a third party and in that case the owner of the trademark is required to approach an israeli attorney and to find out how to go about it and this is the services that we offer so first of all what we do is make sure that the owner of the trademark has a registered trademark in israel and if not we act to file an application immediately the second stage is to inquire regarding the infringement whether it is an infringement um what can we do about it what we usually do as a first step is to send a c synthesis letter to try to exhaust all methods of avoiding litigation which can be prolonged and costly and if that does not work then we file a lawsuit against the infringer in the lawsuit we we note all the infringements and the infringer has 60 days to respond the the rest of the of the case in the in court um involves pre-trial evidence um summations all of these stages uh during which usually the parties reach some sort of agreement or compromise between them and then the matter is resolved and that is basically the infringement you can find more information about this topic in our articles at our website thank you for watching you
Thanks kissaragiL your participation is very much appreciated
- Lorrine Castilleja
About the author
I've studied battlefield archaeology at Morgan State University in Baltimore and I am an expert in philosophy of space and time. I usually feel weird. My previous job was cost estimator I held this position for 30 years, I love talking about mahjong and pilates. Huge fan of Mary Lee Pfeiffer I practice field hockey and collect beanie babies.
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