Home / Can earlier localised goodwill invalidate a trade mark?
5th October 2026
Tom Griffin, Solicitor
Seldom are UK trade mark registrations subject to a territorial limitation. Absent any such limitation, a registration applies (and provides exclusive rights) across the entire UK.
Failure to identify relevant earlier rights and consider territorial limitations can, however, put the entire registration at risk of invalidation (i.e. removal from the register as if it had never been registered).
Consider this: after obtaining a UK trade mark registration, you discover that another business is – despite not having a trade mark registration itself – trading under a similar name (or other sign) in relation to similar goods. Further investigations reveal that the business had been trading consistently for several years before the date of your application, albeit only within a particular locality (such as a city).
The above issue was considered in Caspian Pizza Ltd & Ors v Shah & Anor [2017] EWCA Civ 1874, which confirmed that goodwill established in a particular locality may constitute an earlier right (i.e. passing off) capable of invalidating a UK-wide registration. Further, it may also be used to defend a claim for trade mark infringement.
The key takeaway for brand owners is that trade mark clearance searches should not stop at the UK trade mark register. Earlier unregistered rights may also be a risk, which can have severe consequences. Before a new name or brand is adopted, therefore, a clearance search should identify and consider both registered and unregistered rights.
Brand owners should also consider whether a territorial limitation is appropriate when seeking registration, particularly where earlier localised rights have been identified.
If you have any queries relating to trade mark registration, infringement, or invalidation, please contact a member of our intellectual property department on 0161 832 3434, or at [email protected].