trade mark infringement

A registered trade mark is a property right whereby the owner that grants exclusive rights in relation the use of the trade mark. When the trade mark is used by a person without the owner’s consent, that person infringes the trade mark, and remedies are available to the owner to prevent an ongoing infringement, including damages for past infringements.

There are a number of factors to be taken into account when deciding whether a trade mark has been infringed. These factors are considered below.

Registered Trade mark Rights

The proprietor of a registered trade mark has rights conferred to them under the Trade Marks Act which allows them to prevent unauthorised use of the trade mark by third parties in respect to the goods or services specified on the Register without his consent.

Furthermore, Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPs’) prescribes that trade mark proprietors should have ‘ .. the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion’. However, as with other property rights, registered trade marks can be bought or sold or a licence granted to others in respect of it.

Registered Trademark Infringement

To constitute an infringement, the use of a trade mark must be used ‘in the course of trade’ and fall within one of the acts amounting to infringement as outlined in s.10 Trade Marks Act 1994. The European Court of Justice (ECJ) has indicated that ‘in the course of trade’ ‘…takes place in the context of commercial activity with a view to economic advantage and not as a private matter’ and it means a use which ‘must affect or be liable to affect one of the functions of the mark’.

Therefore, unauthorised use of a trade mark by a non-trading organisation will not constitute an infringement as it is not being used ‘in the course of trade’. Furthermore, use of a trade mark does not necessarily have to be in the ‘trade mark sense’ (an indicator of origin of the goods or services). Use of a trade mark which affects the function of the trade mark as a guarantee of the proprietor’s goods or services will amount to an infringement.

If a proprietor of a registered trade mark wishes to commence infringement proceedings, they may do so once the other trade mark has been registered. Once the trade mark has been registered, their rights accrue as of the application date for the mark.

Acts of Trademark Infringement

There are three situations in which the unauthorised use of a trade mark may constitute an act of infringement:

1. Identical marks on identical goods and services: s 10(1) Trade Marks Act

A third party who uses a mark which is identical to a registered trade mark and which is used on identical goods and services will be an infringement. For it to be identical it must have been exactly reproduced without there having been any modifications to it or where there have been minor or insignificant modifications, and they are unnoticeable from the average consumers’ perspective, it will be considered identical.

2. Identical or similar marks for identical or similar goods and services: s. 10(2)(a) & (b) Trade Marks Act

Where a third party uses an identical mark on similar goods and services or a similar mark on identical goods and services, and there is a possibility that the public are likely to be confused as to the origin of the goods or services or there is a possibility of association between the two marks, this may amount to an infringement. In Sabel BV v Puma AG (1998) the European Court of Justice (‘ECJ’) noted that various factors were to be taken into account on a global scale when considering the issue of likelihood of confusion:

1. how widely the trade mark is recognised on the market;
2. the association between the two marks; and
3. the similarity between the two marks and the goods and services.

However, the concept of likelihood of association is not conclusive of a likelihood of confusion, but merely a factor to be considered.

3. Conflict with a mark of repute: s.10(3) Trade Marks Act

There is likely to be an infringement where a third party uses an identical or similar mark on goods or services which are not similar and the registered mark has a reputation in the UK (or the European Union for Community Trade Marks) and as a result, unfair advantage is taken of the registered mark or is detrimental to its distinctive character and repute.

An unfair advantage relates to an exploitation of the registered trade mark and an attempt by the later mark to associate itself with the reputation of the registered trade mark.

Detrimental to the distinctive character is where the registered trade mark’s association with particular goods or services is affected so that it is no longer capable of being immediately recognised for the goods or services it is registered.

Defences to infringement

There are various defences to trade mark infringement. The issue of ‘honest practice in industrial and commercial matters’ as outlined in s 10(6) Trade Marks Act is an important factor when considering these defences:

‘Nothing in the preceding section [ss 10(1)-(3) on infringement] shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying the goods or services as those of the proprietor or licensee, provided that any such use otherwise than in accordance with honest business practices in industrial and commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character of the mark.’

In considering this issue, in Gerolsteiner Brunnen v Putsch (2004), the ECJ stated that a defendant would have acted in accordance with honest practices when they have acted fairly in relation to the trade mark proprietor’s interests and when they have avoided the perception they were unfairly competing with the trade mark proprietor.

Section 11 Trade Marks Act outlines five defences to trade mark infringement which highlights the limited protection afforded by registration of a trade mark:

1. Use of another registered trade mark: s 11(1)

There is no infringement of a registered trade mark where there is another trade mark registered in relation to the same goods or services provided it is used within its boundaries of registration. There is, however the option for either proprietor to seek to have the other trade mark’s registration declared invalid under the relative grounds for refusal (which are similar to the grounds for acts of infringement mentioned above).

2. Use of own name and address: s 11(2)(a)

A registered trade mark is not infringed where natural persons, including companies and firms, use their name and address as a trade mark, provided it is in accordance with honest practice. The name has to be one by which they are called or usually known. Where this defence applies, there will be no infringement of another trade mark and if any action is to be taken at all, it must be for passing off.

3. Use of certain indications s.11(2)(b)

Use of certain indications regarding the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services will not constitute an infringement of a registered trade mark provided it is in accordance with honest practice. In the case of Holterhoff v Friesleben (2002) the ECJ was asked to consider whether there was an infringement where the defendant used the registered trade mark to describe a characteristic of the goods he was selling, but made it clear the goods had come from him. The ECJ held that there was no infringing use. The defendant had made it clear that he had produced the goods and only described their characteristics with reference to the claimant’s trade mark.

4. Use of intended purpose s.11(2)(c)

There will be no infringement of a registered trade mark where it is necessary to use it to indicate the intended purpose of goods or services, provided it is in accordance with honest practice.

5. The locality defence: s 11(3)

There is no infringement of a registered trade mark where there has been use of an earlier right in the course of a trade in a particular locality. An ‘earlier right’ refers to an unregistered trade mark.

Under s 12(1) Trade Marks Act, where the proprietor of a registered trade mark consents to the use of their trade mark on goods within the European Economic Market (‘EEA’), all trade mark rights are exhausted. However, where consent is provided for use of the trade mark on goods outside of the EEA, the trade mark rights within the EEA will not have been exhausted.

In Closing

In conclusion, registration of a trade mark only offers limited protection to the proprietor, and the monopoly over a trade name granted by Trade Mark legislation is not a monopoly for all purposes.

Having established that a trade mark may have been infringed under s 10(1)-(3) Trade Marks Act, provided the use of the later trade mark is used in accordance with ‘honest practice in industrial and commercial matters’ it would appear that the issue of infringement may be defended.