TRW & Co · Intellectual property
Trade Mark Infringement and Passing Off
Trademark infringement UK claims protect registered marks against identical copies, confusingly similar signs and lookalikes that exploit a reputation. Passing off protects unregistered brands that have goodwill. This guide explains what each claim requires, how recent Court of Appeal decisions on lookalike packaging have shifted the balance, which court to use and the mistakes that weaken a case.
Key pointAfter Thatchers v Aldi, a brand owner can succeed against a lookalike under section 10(3) without proving that a single shopper was confused, provided the mark has a reputation and the copy takes unfair advantage of it.
At a glance
Three statutory limbs
Section 10 of the Trade Marks Act 1994 covers identical use, confusingly similar use, and use that takes unfair advantage of a mark with a reputation.
Passing off trinity
Without a registration, the claimant must prove goodwill, a misrepresentation to the public and resulting damage, which needs more evidence and costs more.
IPEC caps
In the IPEC multi-track, damages are capped at £500,000 and recoverable costs at £60,000 for liability, unless the parties agree otherwise.
Lookalikes on reputation
In Thatchers v Aldi the Court of Appeal found unfair advantage even though confusion and passing off had both failed at trial.
Beware unjustified threats
The Intellectual Property (Unjustified Threats) Act 2017 lets a person aggrieved by an unjustified threat of proceedings sue the person making it.
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Trademark infringement UK: the short answer
Trademark infringement UK claims arise when someone uses, in the course of trade and without consent, a sign that is identical or similar to a registered trade mark. Depending on the facts, the owner must show identical use for identical goods, a likelihood of confusion, or unfair advantage of or detriment to a mark with a reputation. Where there is no registration, the brand owner can still sue in passing off by proving goodwill, misrepresentation and damage.
Both claims can lead to an injunction, damages or an account of the infringer's profits, and the destruction or delivery up of infringing goods. Most disputes settle after a well-prepared letter. When they do not, the choice of court and the speed of action usually matter more than anything else.
The legal framework: section 10 and the common law
Infringement of a registered mark is governed by section 10 of the Trade Marks Act 1994. It has three main limbs.
- Section 10(1): use of an identical sign for identical goods or services. No confusion needs to be shown.
- Section 10(2): use of an identical sign for similar goods, or a similar sign for identical or similar goods, where there is a likelihood of confusion on the part of the public.
- Section 10(3): use of an identical or similar sign, for any goods, where the mark has a reputation in the UK and the use, without due cause, takes unfair advantage of, or is detrimental to, its distinctive character or repute.
The 1994 Act also contains defences in section 11, such as honest descriptive use, and makes counterfeiting a criminal offence under section 92. An owner can only sue for infringement once the mark is registered, although the rights then take effect from the filing date.
Passing off
Passing off is a common law claim that protects goodwill rather than a registration. The House of Lords in the "Jif Lemon" case (Reckitt & Colman Products Ltd v Borden Inc) set out the classic trinity: the claimant has goodwill attached to its goods or get-up; the defendant has made a misrepresentation leading or likely to lead the public to believe its goods are the claimant's; and the claimant has suffered or is likely to suffer damage. Proving goodwill and misrepresentation takes evidence, which makes passing off slower and more expensive than an infringement claim. That is the main reason to register the mark in the first place.
How courts assess confusion and reputation
Likelihood of confusion is judged through the eyes of the average consumer of the goods, who is reasonably well informed and observant but rarely compares marks side by side. The court considers the visual, aural and conceptual similarity of the marks, the similarity of the goods, and the distinctiveness of the earlier mark. Confusion can be direct (mistaking one for the other) or indirect (assuming an economic link).
Reputation-based claims under section 10(3) are increasingly important in trademark infringement UK disputes about lookalike packaging. In Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5, the trial judge had found no likelihood of confusion and no passing off, and Thatchers did not appeal those findings. The Court of Appeal nevertheless held that Aldi's cloudy lemon cider packaging took unfair advantage of the reputation of Thatchers' registered mark. The case shows that an owner can win without proving anyone was confused.
In Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262, the Court of Appeal dismissed Tesco's appeal against findings of trade mark infringement and passing off over its "Clubcard Prices" signs, which used a yellow circle on a blue background, while allowing Tesco's appeal on copyright. The case illustrates how a background device that consumers associate with low prices can carry a strong message.
The modern lookalike case is often won on unfair advantage, not confusion. Shoppers who know exactly which product they are buying can still be the target of a section 10(3) claim.
Registered infringement, passing off and other routes compared
| Route | What must be proved | Strengths | Limitations |
|---|---|---|---|
| Infringement, section 10(1) | Identical sign, identical goods, use in the course of trade | Straightforward; no confusion needed | Only for truly identical use |
| Infringement, section 10(2) | Similar sign or goods and a likelihood of confusion | No need to prove goodwill | Confusion can be contested; evidence of the marketplace helps |
| Infringement, section 10(3) | Reputation, a link, unfair advantage or detriment, no due cause | Covers lookalikes and dissimilar goods | Need evidence of reputation; fact-sensitive |
| Passing off | Goodwill, misrepresentation, damage | Protects unregistered names and get-up | Heavier evidence burden, slower, costlier |
| Opposition or invalidity at the UKIPO | Earlier mark or right and a relative ground | Cheaper; stops or removes a registration | Does not stop use in the market |
| Criminal action for counterfeits | Unauthorised use of an identical or near-identical mark under section 92 | Trading Standards involvement; strong deterrent | Owner does not control the prosecution |
If you receive a complaint
Many businesses first meet trademark infringement UK law as defendants, often through a letter from a larger competitor. The right response starts with the facts. Is the complainant's registration valid, in force and actually used for the goods it relies on? Is your sign really similar, and are the goods really similar? Do you have earlier rights of your own, or a defence such as honest descriptive use under section 11?
A defendant may also have a counter-attack: an application to revoke the registration for non-use, or to declare it invalid, including on bad faith grounds where the specification was drafted far wider than any intended use. It may also have a claim of its own if the letter amounted to an unjustified threat.
Not every complaint should be fought. A modest rebrand, a sell-off period or a co-existence agreement can cost far less than litigation, and an early, measured response usually gives the most room to negotiate. What matters is that any concession is a commercial choice made with a clear view of the legal merits of the trademark infringement UK claim.
Choosing a court: High Court or IPEC
Trademark infringement UK claims are brought in the Business and Property Courts. Larger cases go to the Intellectual Property List of the Chancery Division of the High Court. Smaller and mid-sized cases go to the Intellectual Property Enterprise Court (IPEC).
The IPEC Guide explains the key features. In the IPEC multi-track, damages or an account of profits are capped at £500,000 unless the parties agree otherwise, and recoverable costs are capped at £60,000 for the liability stage and £30,000 for an inquiry as to damages. Claims worth less than £10,000 can be heard on the IPEC small claims track, which covers trade marks, passing off and copyright. The caps give both sides a predictable budget, which often encourages earlier settlement.
Where speed matters, an interim injunction may be needed to stop sales pending trial. The court will want to see prompt action, a serious issue to be tried and that damages would not be an adequate remedy, and the claimant will usually have to give a cross-undertaking in damages. Our injunctions team handles urgent applications; where advocacy in the higher courts is required, we instruct specialist counsel.
How a trademark infringement UK dispute runs, step by step
- Preserve evidence. Capture dated screenshots, test purchases, packaging, invoices and any instances of actual confusion such as misdirected emails or reviews.
- Confirm the rights. Check the registration covers the goods in question, is in force, is owned by the right entity and is not vulnerable to non-use revocation; assess goodwill for passing off.
- Assess the threats rules. Check the Intellectual Property (Unjustified Threats) Act 2017 before writing, especially to retailers or other secondary actors.
- Send a letter before claim. Set out the rights, the infringing acts and the remedies sought, in line with the pre-action expectations; see our guide to the letter before claim.
- Negotiate. Most matters resolve through undertakings, a sell-off period, rebranding, or a co-existence agreement; consider mediation if talks stall.
- Issue proceedings. Choose IPEC or the High Court, and consider an interim injunction if sales continue and damage is mounting.
- Trial and remedies. If the claim succeeds, seek a final injunction, damages or an account of profits, delivery up or destruction, and costs.
The first letter can create liability. Under the Intellectual Property (Unjustified Threats) Act 2017, a person aggrieved by an unjustified threat of infringement proceedings can sue the person who made it. Threats to retailers and other secondary actors carry the most risk; communications with a manufacturer or importer, and permitted communications, are treated differently. Have the letter reviewed before it goes.
An illustrative scenario
This scenario is illustrative only and does not describe any real client or matter.
A UK skincare brand with a registered word mark and distinctive amber bottles finds that a new online seller is offering a cheaper range with a similar name and near-identical bottles. Sales of the original range dip and customers post reviews asking whether the two are connected.
The brand has three potential claims: section 10(2) infringement based on the similar name and identical goods, supported by the confused reviews; section 10(3) if the mark has a UK reputation and the seller is riding on it; and passing off for the bottle get-up, which is not registered. Before writing, its lawyers check whether the seller manufactures the goods or merely sells them, because that affects how a threats letter can be framed. They also check that the brand's registration has been genuinely used for the goods relied on.
A letter to the seller, sent promptly and backed by evidence, produces undertakings to rebrand after a short sell-off period. Had the seller refused, IPEC would have been a proportionate forum given the likely damages. The brand then seeks design protection for the bottle, so that it does not have to rely on passing off next time.
Risks and common mistakes
Waiting too long to act
Delay weakens a claim. A court is unlikely to grant an interim injunction to a brand owner who knew about the infringement for months and did nothing, and delay can also support arguments of acquiescence and allow the defendant to build its own goodwill. Claims for infringement and passing off are generally subject to a six-year limitation period, but the practical window for injunctive relief is much shorter. Gather evidence and take advice as soon as the problem appears.
Relying on an unused or overbroad registration
A defendant's first move is often to attack the claimant's registration. If it has not been genuinely used for five years in relation to the goods relied on, it may be revoked; if the specification was drafted far wider than any intended use, a bad faith attack may follow after the Supreme Court's SkyKick decision. Audit your registrations and evidence of use before you start a dispute, not after the defence arrives.
Sending threats to retailers
Brand owners naturally want to stop the shops and marketplaces that sell infringing goods. But under the 2017 Act, threatening a retailer with infringement proceedings can expose the brand owner to a claim for an unjustified threat unless the communication falls within the permitted categories. Write to the manufacturer or importer where possible, and frame any contact with retailers carefully, with legal review.
Ignoring the defendant's own rights
Some defendants have earlier unregistered rights, their own registrations, or a defence such as honest descriptive use. Others may counterclaim for invalidity or revocation. A claim launched without checking these points can backfire and leave the claimant paying costs. A short risk review covering both sides' rights is a sensible first step in any trademark infringement UK dispute.
Cross-border infringement and online marketplaces
UK trade mark rights are territorial: they are infringed by use in the UK, which includes online offers targeted at UK consumers. A website or marketplace listing hosted abroad can still infringe if it targets the UK, for example by pricing in sterling or offering UK delivery. Online marketplaces operate their own notice and takedown processes, which can be quicker than litigation for clear-cut copies.
Counterfeits often enter the UK from overseas manufacturing hubs. Brand owners can ask the customs authorities to detain suspected counterfeit goods at the border, which works best alongside registrations in the manufacturing country. For goods connected with Bangladesh or South Asia, our UK–Bangladesh disputes team coordinates action in both jurisdictions. Advertising claims that reference competitors raise separate issues, which our advertising and marketing lawyers advise on.
New technology is also reaching the courts. In Getty Images v Stability AI, the High Court upheld a limited part of Getty's trade mark claim concerning watermarks appearing on some AI-generated images, showing that trade mark law can reach AI outputs even where copyright claims fail. Our guide to copyright and AI covers the copyright side.
What to do next: checklist
- Record and preserve evidence of the infringing use and any actual confusion.
- Confirm your registrations, ownership and evidence of use for the goods concerned.
- Identify the manufacturer or importer as well as the seller.
- Check the unjustified threats rules before any letter is sent.
- Decide what you want: a stop, a rebrand, compensation, or all three.
- Choose a forum early; consider IPEC for proportionate cost.
- Fill gaps in protection, including designs and overseas registrations.
Our IP litigation team acts for claimants and defendants in trademark infringement UK disputes and passing off claims. Contact our London office at Holborn Gate, 330 High Holborn, London WC1V 7QH, by email at info@trw.co or on +880 1779 127165.
Frequently asked questions
01What counts as trade mark infringement in the UK?
Under section 10 of the Trade Marks Act 1994, infringement is use in the course of trade, without consent, of a sign that is identical to the registered mark for identical goods or services; identical or similar to it for identical or similar goods where there is a likelihood of confusion; or identical or similar to a mark with a UK reputation, where the use without due cause takes unfair advantage of or is detrimental to its distinctive character or repute. Statutory defences, such as honest descriptive use, may apply.
02What is the difference between trade mark infringement and passing off?
Infringement protects a registered trade mark, so the owner relies on the registration and does not need to prove goodwill. Passing off is a common law claim that protects unregistered goodwill; the claimant must prove goodwill in the name or get-up, a misrepresentation leading the public to believe the defendant's goods are the claimant's, and damage. Passing off can protect things a registration does not, such as overall packaging, but it is usually slower and more expensive to prove.
03Can I sue for a lookalike product if no one is confused?
Potentially, yes, if your mark has a reputation in the UK. Section 10(3) of the 1994 Act does not require confusion; it requires a link in the mind of the average consumer and use that, without due cause, takes unfair advantage of or harms the mark. In Thatchers v Aldi the Court of Appeal found unfair advantage even though the trial judge had found no likelihood of confusion and no passing off. Success depends on evidence of reputation and the specific facts.
04How much can I recover in a trade mark claim?
Remedies include an injunction, either damages or an account of the infringer's profits, delivery up or destruction of infringing goods, and a contribution to costs. In the Intellectual Property Enterprise Court, damages are capped at £500,000 and recoverable costs at £60,000 for the liability stage and £30,000 for an inquiry as to damages, unless the parties agree otherwise. Claims worth less than £10,000 can use the IPEC small claims track. High Court claims have no damages cap.
05Is it risky to send a cease and desist letter?
It can be. The Intellectual Property (Unjustified Threats) Act 2017 allows a person aggrieved by an unjustified threat of trade mark infringement proceedings to bring a claim against the person who made it. The risk is highest when writing to retailers and other secondary actors. Communications with the manufacturer or importer, and permitted communications made for a legitimate purpose, are treated differently. A letter should be drafted with the threats rules in mind and reviewed before it is sent.
06How long do I have to bring a trade mark infringement claim?
Infringement and passing off are generally subject to a six-year limitation period for damages, but waiting is rarely wise. Delay makes an interim injunction much harder to obtain, can support arguments that you accepted the use, and allows the other side to build goodwill of its own. It also gives time for evidence to disappear. Preserve evidence and take advice promptly once you become aware of the infringing use.
Sources and official materials
- Trade Marks Act 1994 — Registered trade mark rights, defences and offences
- Trade Marks Act 1994, section 10 — The infringement provision
- Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5 — Unfair advantage and lookalike packaging
- Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262 — Infringement and passing off by a price-message sign
- Intellectual Property (Unjustified Threats) Act 2017 — Liability for unjustified threats of proceedings
- Intellectual Property Enterprise Court Guide — Damages and costs caps and the small claims track
General information only, current as at 21 October 2026. It is not legal advice and does not create a solicitor–client relationship. It reflects the law of England and Wales unless stated otherwise; Scotland and Northern Ireland have separate legal systems, and the law changes frequently. Check current official sources and take advice on the facts of your matter.