Trade mark infringement can be proved when a business uses similar or identical designs to designs which are already registered trademarks.
Infringement of trademarks are one area of intellectual property protection which has significantly increased awareness with the digitisation of information and popularity of the internet. Infringers often ignore or are not aware the serious risks of trade mark claims when using marks or design elements similar to registered trademarks, due in part to ease with which it can be done and a lack of monitoring by trade mark owners. When push comes to shove, when can a trademark owner prevent another business frionm using the same trademark?
The common law tort of passing off is another useful form of protection for a company’s trademarks and distinctive design features. Passing off is in fact still available to holders of unregistered trade marks although few commercial brands would consider relying on it to protect themselves these days – sometimes, brand owners are required to sue using passing off where its rights have been infringed.
A business that owns a distinctive mark as part of their brand can now register that mark as a trademark under the Trade Marks Act of 1994 as long as it meets certain criteria. This enables it to rely upon the powerful and cost effective legal claim of trade mark infringement to enforce its rights and protect the commercial value in its registered trademarks.
Almost invariably, it is more cost-effective for brand owners to rely on trade mark infringement, as opposed to relying on the tort of passing off.
Trade mark infringement occurs when a company or individual uses an identical or similar trade mark to one already registered as a trade mark for the sale of identical or similar goods and services.
The use of another’s trade marks, whether intentional or not, allows the infringer to piggy-back off the goodwill of the registered mark holder. This damages the mark holder’s brand by making its product less exclusive.
Infringement occurs if the use creates a likeliness of confusion in the minds of the general public about the source of goods or services, such that they believe they are purchasing a particular good or service when in fact they are not. The courts have more recently been willing to extend this to distinctive design elements in trade marks as well as the trade marks themselves.
Trade mark infringement may also occur where a registered mark has built up a significant reputation. Customers may be expecting a certain level of quality which may not be found in the competing product, thus degrading their commercial reputation. In this case the mark holder may be able to make a claim in the absence of consumer confusion if the perpetrator causes damage to its brand or gains an unfair advantage through the use of the registered mark. This instance usually applies where similar or identical trade marks are used for dissimilar products.
The primary remedies for trade mark infringement are damages and injunctive relief. Criminal sanctions are also available in a number of countries for serious breaches.
Trade mark owners concerned about infringement of their rights or third parties concerned about their potential infringement of an existing trade mark should seek immediate legal advice. The best actions or defences are always dependent upon the facts of a specific case and trade mark claims are often not clear cut.
Our trademark solicitors in London provide specialist legal advice on infringement of trademarks and enforcement, and defences to trade mark claims contact Leigh Ellis on +44 20 7353 1770.