Without a registered trade mark it can be tough for brand owners trying to protect their patch. This case of two “Impact” businesses operating in related fields is a case in point, click here.
Who: Impact Plus plc and Impact Executives Llc and Impact Executives Limited
Where: High Court, London
When: Reported August 2001
Impact Plus plc ("Plus") sued Impact Executives Limited ("Executives") for passing off. Plus provided change management consultancy services. Executives serviced a similar customer base but provided temporary executive employees. Plus lost the case. They could not produce clear evidence that the word "Impact" was synonymous with their services in the relevant marketplace. They also could not come up with a single concrete example of a company being misled by Executive's use of the word "Impact" into actually believing that Executives and Plus were either linked or one and the same company.
Since these factors form two of the three essential building blocks of a passing off case, the court had little alternative but to throw Plus’s case out.
Why this matters
The majority of cases brought in passing off fail. It is a notoriously difficult tort to prove. Trade mark registration remains the best way of protecting a trade mark, but one suspects the ability of the word "Impact" to describe Plus's services made it difficult for Plus to register its name if it ever tried to do so. The more descriptive a trade mark is, the more likely it is that the Trade Mark registry will reject any attempt by a single business to register it and thereby gain a monopoly over it. So what businesses are left with is defending their brands with the dubious weapon of a claim in "passing off". Here, as this case shows, even limited differences between multi-word names will often be enough to leave brand owners powerless even if, as in this case, the related fields in which the protagonists operated must have been likely to dilute significantly Plus's long term goodwill in its name.