Understanding Trade Marks: A Global Business Essential
1. Why Trade Marks Matter for Every Business
Whether you’re launching a streetwear brand in Seoul, a tech start-up in Berlin, or a coffee chain in São Paulo, your trade mark is one of your most valuable assets. It’s more than just a name or a logo — it’s how customers recognize, trust, and remember your business.
A trade mark (or trademark) is any sign capable of distinguishing the goods or services of one enterprise from another. This can include:
-
A brand name (e.g. Nike)
-
A logo (e.g. Apple’s bitten apple)
-
A slogan (Just Do It)
-
Even shapes, sounds, or colors (if distinctive enough)
In other words, a trade mark is not just a legal label — it’s the public identity of your business.
2. Trade Marks as Personal (and Transferable) Property
Once registered, a trade mark is considered intellectual property (IP) — and like any property, it can be:
-
Bought or sold (e.g. a company selling its brand name to another)
-
Licensed to others (e.g. allowing another company to use your logo under contract)
-
Used as collateral to secure loans or investment
-
Inherited or transferred as part of a merger or acquisition
This means that protecting your mark is not just about legal compliance — it’s about building a tradable asset that can significantly increase your company’s valuation.
Real-world example:
When Facebook acquired Instagram in 2012, part of what they were paying for was the brand value — the trade mark “Instagram” had enormous global recognition, and its IP rights were key to the deal.
3. Registering a Trade Mark: National vs. Regional Systems
Before the creation of international systems, trade mark protection was territorial — meaning you had to register separately in every country where you wanted protection. This is still the case in many regions.
Today, you have three main routes:
-
National registration: Register directly in the country where you operate.
-
Regional registration: Some regions offer one single registration valid across multiple countries.
-
International registration: Through the Madrid System (WIPO), businesses can file one application and extend protection to over 100 countries.
4. The EU Approach: Building a Single Market for Brands
The European Union took a major step toward a unified market by harmonizing trade mark law across its Member States. The goal: make Europe function like one single territory for brand protection.
To achieve this, the EU developed a “dual track” system:
-
Harmonizing national laws: Member States’ domestic trade mark laws were aligned through EU directives to ensure consistency.
-
Creating an EU-wide registration system: Businesses could apply once and obtain protection across all EU countries.
This approach was crucial for businesses expanding across European borders — no need to file 27 separate applications or navigate different national requirements.
5. The Evolution of EU Trade Mark Law
Key milestones in this development include:
-
1988 – First Trade Marks Directive (89/104/EEC): Set out to align Member States’ laws and standards on registration, infringement, and revocation.
-
1994 – Community Trade Mark Regulation (EC 40/94): Introduced a single EU-wide registration system.
-
2009 – Codified Regulation (EC 207/2009): Updated and consolidated the previous rules.
-
2017 – EU Trade Mark Regulation (Regulation (EU) 2017/1001): The current law governing EU trade marks today.
Importantly, the rules on what can be registered, how infringement is defined, and how marks can be revoked are almost identical under both the Directive and the Regulation.
This means case law interpreting one can often be applied to the other, making the system more predictable and business-friendly.
6. The Role of EUIPO: One Application, 27 Countries
Trade mark applications for EU-wide protection are handled by the European Union Intellectual Property Office (EUIPO), based in Alicante, Spain.
A trade mark registered here is known as a European Union Trade Mark (EUTM) and grants protection across all EU Member States.
Why this matters for business:
-
You file one application and pay one fee.
-
Your trade mark is protected in 27 countries.
-
It’s easier to enforce your rights against infringement across borders.
7. Brexit: What Changed for UK Businesses
After the Brexit transition period ended (December 2020), EU trade marks no longer cover the UK.
However, any EUTM registered before that date was automatically converted into a UK trade mark known as a “comparable trade mark (EU)”.
For businesses outside Europe, this means you now need separate registrations if you want coverage in both the EU and the UK.
Trade marks are not just legal tools — they are strategic business assets that shape your company’s identity, protect its market position, and drive its value. Understanding how trade mark systems work — nationally, regionally, and internationally — is essential for anyone serious about building a global brand.
From Brand Confusion to Business Protection: The Real Meaning of “Passing Off”
In business, your brand identity is often more valuable than your products.
Your name, your logo, your colors, your packaging — they all tell a story.
But what happens when someone copies that story, intentionally or not, to profit from your reputation?
That’s where the legal concept of “passing off” comes in.
What Is “Passing Off”?
At its core, passing off is a legal protection for reputation and goodwill.
It prevents one business from pretending that its goods or services are connected with another — whether through name, packaging, or any misleading appearance.
In plain words:
“Passing off” stops someone from selling confusion.
It’s not about who owns a logo or name (like in trademark law).
It’s about who built trust in that name — and protecting that trust from being hijacked.
The “Classic Trinity” of Passing Off
To succeed in a passing off claim, three elements must be proven:
-
Goodwill or Reputation
– You’ve built recognition among customers.
– People associate a particular name, packaging, or look with your business.
-
Misrepresentation
– Someone else uses a similar name, logo, or presentation that confuses customers, making them believe the products come from you.
-
Damage
– You lose customers, or your brand image is harmed because of that confusion.
For example:
Imagine you built a small skincare brand called "PureSol" in Singapore, using eco-friendly packaging and a soft beige tone.
Another seller in Thailand launches "PureSoul", same colors, similar packaging, even a leaf-shaped logo.
Customers start tagging the wrong account on Instagram, or leaving bad reviews on your page after buying their product.
Even if you never registered a trademark, you could still rely on passing off — because you can show:
-
you had goodwill (real customers recognize your brand),
-
there was misrepresentation (the competitor caused confusion),
-
and you suffered damage (loss of reputation or sales).
“Classical” vs “Extended” Passing Off
Originally, passing off only applied to confusion about origin —
when customers thought a product came from the wrong company.
That’s the “classical” version.
But modern markets became more complex — with marketing, influencers, design aesthetics, and global online sales — so courts started recognizing new forms of harm:
-
False claims about product quality or origin
-
Copying packaging or color schemes (trade dress)
-
Even exploiting the style or emotional message of an ad campaign.
That’s the “extended” version.
The Power of “Get-Up” — or Why Packaging Can Speak Louder Than Words
In many industries, customers identify products not just by names, but by how they look.
The shape of a bottle, the tone of a color, the typography — all can become part of your brand DNA.
When someone imitates that look, even without using your name, it can still mislead customers.
That’s why passing off also protects the overall appearance of your goods — what lawyers call the “get-up” or trade dress.
Example:
A company in Italy sells premium coffee capsules in matte black boxes with a gold stripe and minimal logo.
Months later, a cheaper competitor in another country releases a near-identical design — same stripe, same box, just a different name.
Even if no trademark is copied, customers may believe the new brand is a “budget version” of the original.
That visual confusion is exactly what passing off aims to stop.
Why This Matters to Global Entrepreneurs
You don’t need to be a big corporation to face this problem.
In fact, the more digital your business is, the more vulnerable you are:
-
Sellers on Amazon, Shopee, or TikTok Shop can easily imitate product listings.
-
Startups without formal trademarks can still lose reputation overnight.
-
Even a viral design aesthetic (color palette, bottle shape, slogan) can be copied faster than you can file a registration.
Understanding passing off helps you protect your intangible capital — your brand’s emotional value — especially in markets where legal registration might take time or money.
The Bigger Idea: Trust Is Your Trademark
Think of passing off as the law of trust in commerce.
It doesn’t reward paperwork — it rewards authentic connection with customers.
If people know your brand, believe in it, and someone tries to ride on that belief — that’s when the law steps in.
And whether you’re a small creator in Manila, a startup founder in Berlin, or a business owner in Mumbai —
the principle is the same: protect what makes your customers trust you.
Q1: Which of the following can qualify as a trade mark?
A distinctive brand name, logo, slogan, or unique product shape Generic terms like "coffee" or "shirt" that describe the product Colors or shapes used universally in an industry without distinction
Q2: How can a registered trade mark become a valuable business asset?
It can be bought, sold, licensed, or used as collateral, increasing company valuation It automatically guarantees higher sales regardless of marketing or product quality It allows unlimited international protection without filing in each jurisdiction
Q3: What are the “classic trinity” elements of passing off?
Goodwill, misrepresentation, and damage to the business or brand Ownership of a trademark, registration date, and international filing Distinctiveness, length of use, and EUIPO approval
