Trade mark infringement

Trade mark infringement

Contents

Trade mark infringement

A registered trade mark is a property right. It can be bought or sold or licensed, either entirely or partially. The owner's exclusive rights to a trade mark are infringed if, in the course of trade, a person does any of the following (even without specific knowledge of the registration and/or intent to deceive):

  • Uses a mark which is identical to a registered trade mark in relation to goods and services identical to those for which the mark is registered
  • Uses a mark which is identical to a registered trade mark in relation to goods and services similar to those for which the mark is registered and there is a likelihood of confusion in the public mind
  • Uses a mark which is similar to a registered trade mark in relation to goods and services identical to those for which the mark is registered and there is a likelihood of confusion in the public mind
  • Uses a mark which is similar to a registered trade mark in relation to goods and services similar to those for which the mark is registered and there is a likelihood of confusion in the public mind
  • Uses a mark which is identical or similar to the registered trade mark where the proprietor of the registered mark has established a reputation and such use, without due cause, would take unfair advantage of or be detrimental to the character or the repute of the earlier trade mark

Where a sign differs from a trade mark only in insignificant details which would not be noticed by the average purchaser, that sign may be deemed to be identical for the purposes of assessing whether it infringes a registered trade mark.

Who can bring infringement proceedings?

The trade mark owner can bring infringement proceedings.

A licensee can bring infringement proceedings in its own name in the following circumstances (although this right can be, and commonly is, excluded by express provision in the licence):

  • The mark is a UK registered mark, the licence is exclusive, and the licensee has asked the proprietor to bring proceedings, but the proprietor has either refused to do so or failed to do so within two months.
  • The mark is a UK registered mark, the licence is exclusive, and the licence includes a provision giving the licensee the same rights and remedies as if the licence had been an assignment. In this situation, the licensee's rights run alongside those of the owner.
  • The mark is an EUTM, and the proprietor has given its consent for the licensee to bring proceedings.
  • The mark is an EUTM, the licence is exclusive, and the proprietor has failed to bring proceedings within 'an appropriate period' after being given formal notice to do so.

Subject to any provision to the contrary in the licence, a non-exclusive licensee may only take infringement proceedings with the consent of the owner.

From what date are financial remedies available?

Proceedings for infringement of a mark cannot be started until the mark is actually registered.

The proprietor of a UK registered mark can recover damages in relation to acts committed after the trade mark application date.

The proprietor of an EUTM can only recover in relation to acts committed after the date when the EUTM registration is published. However, reasonable compensation may be claimed in respect of acts occurring after the date of publication of an EUTM application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. Such compensation should be calculated by reference to the profits arising from the wrongful use of the sign by the defendant.

Manner of use

Acts that can infringe trade marks include:

  • Affixing the sign to the goods or to the packaging thereof
  • Offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder
  • Importing or exporting the goods under that sign
  • Using the sign on business papers and in advertising
  • Using the sign as a trade or company name or part of a trade or company name
  • Using a sign in comparative advertising in a way that is contrary to the Comparative Advertising Directive

Also, there is a right to prevent unauthorised parties from placing a mark, or indeed any sign that is similar to it, on packaging, tags, labels, security or authenticity features or on any other items to which a mark can be affixed ('means'), provided this is done in the course of trade and there is a risk that:

  • The packaging, labels, tags, security or authenticity features or devices or other means to which the trade mark is affixed could be used in relation to goods or services
  • Such use in relation to those goods or services would constitute trade mark infringement
  • This will also apply to the secondary acts of offering or placing the means on the market, or stocking them for those purposes, or importing or exporting them

For a particular use of a sign to constitute infringement, the following conditions must be present:

  • The use must be in the course of trade
  • The use must be in relation to goods and services
  • There must be no consent from the trade mark proprietor
  • The use must affect, or be liable to affect, the functions of the trade mark

Likelihood of confusion

Other than in cases involving use of an identical sign for identical goods or services, or a mark with a reputation, it is necessary to prove a likelihood of confusion. The court will examine whether confusion was likely at the time when the allegedly infringing goods were first sold. The following principles apply:

  • It is necessary to consider not only the actual use that a claimant has made of its mark, but also a notional and fair use of the mark in respect of all of the goods falling within the scope of the specification (after partial revocation, where appropriate).
  • A likelihood of confusion may be inferred from the surrounding circumstances.
  • Confusion includes a likelihood of association, i.e. that the relevant public would think that the goods have the same origin or an associated origin. However, mere association on its own is not enough to satisfy the requirement for a likelihood of confusion.
  • It does not include a 'non-origin association' (the situation where one mark calls another to mind, without any confusion as to origin).

The likelihood of confusion must be assessed by taking into account all factors relevant to the circumstances of the case, including the mark's inherent characteristics, and the fact that it did (or did not) contain elements which described the goods or services in question. An assessment of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components.

The more similar the goods or services covered, and the more distinctive the earlier mark, the greater the likelihood of confusion.

It does not matter which way round the confusion arises; i.e. whether the infringer's goods or services are confused for those of the infringed or the other way round.

Assessing similarity between goods or services

The following factors are relevant to an assessment of similarity between goods or services:

  • The respective uses of the respective goods or services
  • The respective users of the respective goods or services
  • The physical nature of the goods or acts of service
  • The respective trade channels through which the goods or services reach the market
  • In the case of self-service consumer items, the location where they are, or are likely to be, found in supermarkets and, in particular, whether they are on the same or different shelves
  • The extent to which the respective goods or services compete with each other

Infringement of mark that has a reputation

It is an infringement of a registered trade mark to use in the course of trade a sign which is identical with or similar to the trade mark; and which is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The provision can be relied on by owners of trade marks with a reputation, whether the sign is used in relation to goods or services which are the same, similar or dissimilar to those in respect of which the trade mark is registered.

The likelihood of confusion is not a necessary element for infringement. However, in order to establish that an allegedly infringing sign is similar to the registered trade mark, there must be elements of visual, aural or conceptual similarity. It is sufficient that the relevant section of the public establishes a link between the sign and the mark as a result of the similarity between the two without necessarily confusing them.

Reputation

In order to have a reputation, a mark has to be known to a significant part of the public concerned by the products or services covered by the mark. The relevant public depended on the product or service which was being marketed. When considering the relevant public, courts should consider factors such as the market share associated with the trade mark, the intensity, geographical extent and duration of its use and the size of the investment made by the undertaking that was promoting the mark.

When assessing reputation, the court must take into account not only the actual use made of the claimant's mark, but also all normal and fair notional use of the mark in respect of the goods or services for which it is registered.

Assessing unfair advantage or detriment

The claimant has to show that there is one of three types of 'injury'. These are:

  • Detriment to the distinctive character of the mark ('dilution')
  • Detriment to the repute of the mark ('tarnishment')
  • Taking unfair advantage of the distinctive character or repute of the trade mark; otherwise known as 'free-riding' on the coat-tails of the well-known mark

Change in economic behaviour of relevant public

The trade mark owner must prove a change in economic behaviour of the average consumer of the goods or services in question which is due to the use of the later mark.

Meaning of due cause

A third party may have due cause to use a sign similar to a registered mark, in relation to a product identical with that for which the mark is registered, as long as the sign was being used before that mark was applied for, and the use of the sign in relation to the identical product was in good faith. In order to determine whether that is so, the court must take particularly into account the following circumstances:

  • How that sign has been accepted by, and what its reputation is with, the relevant public
  • The degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered
  • The economic and commercial significance of the use of that sign for that product

The concept of due cause can cover not only objectively overriding reasons, but also the subjective interests of the third party who is using a sign. The decision of the court as to whether there was due cause for the use would therefore depend on factors such as how the earlier sign had been used, its reputation, and the intention of the person using it.

Remedies

In an infringement action, the registered owner may claim any of the following remedies:

  • Damages or an account of profits. These will relate only to the period after the trade mark proprietor applied for the mark (in the case of a UK registration) or after the application was published (in the case of an EUTM). Licensees have a right to intervene in infringement proceedings to obtain compensation for their losses
  • An order for the offending sign to be erased, removed or obliterated from any infringing goods, material or articles.
  • An order for delivery up and destruction of infringing goods, materials or articles
  • Injunctive relief (or, in Scotland, Interdict)

The relief obtained will reflect the conduct and position of the defendant. For example, where an honest and unwitting infringer admits liability, this may be reflected in the terms of any injunction granted.

Defences

The defences are that the allegedly infringing use (which must, in any case, be in accordance with honest practices in industrial or commercial matters) is:

  • The use by a person of their own personal name
  • The use of signs or indications concerning the kind, quality, geographical origin and other characteristics of goods or services
  • The use of a trade mark where it is necessary to indicate the intended purpose of a product or services (in particular, accessories or spare parts) or for identifying or referring to goods or services as those of the trade mark owner
  • The use in the course of trade in a particular locality of an earlier right which applies only in that locality. In this context, earlier right means an unregistered trade mark or other sign continuously used in relation to goods or services, and the type of earlier right most often relied on in a UK context is the right to sue for passing off. Similar provisions apply to EUTMs

There is a further defence where the claimant in infringement proceedings is relying on a mark that had not yet acquired the necessary distinctiveness or reputation when the defendant applied for the mark at issue in the proceedings.

Although not specifically provided for, various court decisions have recognised that honest concurrent use can constitute a defence to infringement.

The proprietor of a trade mark cannot seek to prevent use of a sign if their mark is liable to revocation for lack of genuine use. This prevents trade mark owners from relying on old unused rights in infringement cases and removes the need for use to be challenged by way of separate revocation proceedings. It can only be invoked as a defence in cases where the trade mark has been on the register (that is, the registration procedure completed) for at least five years.

Where a mark is restored to the register, the proprietor of the mark may not bring an action for infringement against a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with or similar to the mark in respect of the period beginning with the date of expiration of the registration and ending on the date its restoration is published.

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