Once a trademark has been officially registered, rights are conferred on the owner of the mark under the Trade Marks Act 1994 (TMA 1994), including the right to prevent unauthorised use of that trade mark by third parties in respect to the goods or services specified on the register.
In addition, the World Trade Organisation’s Agreement on Trade-Related Aspects of Intellectual Property Rights states that the owner of a registered trade mark has the right to prevent all third parties from using the similar signs for goods or services which are identical or similar to those for which the trademark is registered.
Under TMA 1994, s 10(4), a mark is used if it:
A key element in establishing whether there has been trademark infringement is to ascertain whether the owner of the mark has consented to its use. If there has been no consent the third party will not be authorised to use it.
The owner of a trademark can license or even the sell the authorised use of it to third parties.
Lack of consent for the use of the trademark is not enough to prove infringement, however: other factors need to be present.
To establish that there has been a trademark infringement it must be shown that:
When establishing whether the use of a mark has taken place in the course of trade the European Court of Justice stated in the 2002 Arsenal case (Arsenal Football Club plc v Matthew Reed) that it must be used in the course of a commercial activity with a view to gain and not one which is simply a private matter.
In practice, if money changes hands or if a company is using a mark to promote their goods whereby they receive income this is likely to be found to be within the course of trade.
TMA 1994 specifies the following acts as infringements to a registered trademark:
If a third party uses a mark which is identical to a trademark registered by another individual on goods or services which are identical to those which the registered trademark is used for there will be an infringement.
This is often the case when someone may wish to pass off counterfeit clothing as real by using the identical brand logo on an identical item of clothing.
For a mark to be seen as identical it must be reproduced without any modifications made to it.
If the mark has been modified but these modifications are only seen as minor or insignificant and where they are noticeable from the average consumers perspective, they will still be seen as identical. If the modifications are more than minor then the infringement may fall into the second category specified by TMA 1994.
As is often the case in counterfeit clothing, for example, a third party will use an identical mark on similar goods and services or they will use a similar mark on similar goods and services. However, for an infringement to be established, it must be shown that:
To establish the above criteria the following factors will be taken into account by a court:
This infringement deals with the scenario where an identical or similar mark is used on goods or services that are not similar to those goods or services which the registered trademark represents.
To establish infringement, the trademark owner will have to show that the mark has a reputation within the UK and either one of the following:
An unfair advantage means that the use of the similar or identical mark is an attempt to associate itself with the registered mark and exploit the goodwill associated with that mark.
Where the use of another mark is said to be detrimental to the distinctive character of the registered mark it means the mark’s association with certain goods or services is no longer immediately recognised.
Nicola is a dual qualified journalist and non-practising solicitor. She is a legal journalist, editor and author with more than 20 years' experience writing about the law.
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