What acts will constitute infringement of a registered trademark?
The first thing to note when dealing with the potential infringement of a trademark is to ensure that the trademark has in fact been registered.
If this is the case then the trademark will be an official registered trademark which will confer various rights on the owner of the mark. One of the rights conferred to the owner of a trademark under the Trade Marks Act 1994 is the right to prevent unauthorised use of that trade mark by third parties in respect to the goods or services specified on the register.
Furthermore the European Union law Agreement on Trade-Related Aspects of Intellectual Property Rights states that the owner of a registered trade mark has the exclusive 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.
What is meant by unauthorised use?
One of the key elements in order to establish whether the use of something has been authorised to establish whether the owner of the mark has in fact consented to the use of the mark. If there has been no consent the third party will not be authorised to use it.
How is consent given?
As is the case with various other aspects of Intellectual Property Law the owner of a trademark can license or even the sell the authorised use of it to third parties.
Is lack of consent enough to prove infringement?
Unfortunately lack of consent for the use of the trademark is not enough to prove infringement as there are a variety of other factors which need to be present.
In order to establish that there has in fact been a trademark infringement the following must be established:
- That the mark was used in the course of trade or business
- That the use falls within one of the infringing acts prescribed by the Trade Marks Act
In the course of trade
What is meant by in the course of trade?
When establishing whether the use of a mark has taken place in the course of trade we can look to a decision handed down by the European Court of Justice. The ECJ has stated that for something to be in the course of trade it must take place in the context of a commercial activity which has a view to an economic advantage and not one which is simply a private matter.
Following on from this the use of a trademark by an organisation or an individual whom is not acting in a commercial way will not be seen as being in the course of trade.
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.
For more information on:
- The Trade Marks Act 1994
- Identical marks on identical goods and services
- What does it mean for a mark to be identical?
- What happens if the mark has been modified?
- Identical or similar marks for identical or similar goods and services
- How is this established?
- Conflict with a mark of repute
- Unfair Advantage
- Detrimental to the distinctive character