What acts constitute infringement of a registered trademark?
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.
What is meant by use?
Under TMA 1994, s 10(4), a mark is used if it:
- affixes to goods or the packaging thereof;
- offers or exposes goods for sale, puts them on the market or
stocks them for those purposes under the sign, or offers or supplies
services under the sign;
- imports or exports goods under the sign; or
- uses the sign on business papers or in advertising.
What is meant by unauthorised use?
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:
- the mark was used in the course of trade or business;
- the use falls within one of the infringing acts prescribed by TMA 1994.
What is ‘in the course of trade’?
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.
Trade Marks Act 1994
TMA 1994 specifies the following acts as infringements to a registered trademark:
- identical marks on identical goods and services;
- identical or similar marks for identical or similar goods and services;
- conflict with a mark of repute.
Identical marks on identical goods and services
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.
Identical or similar marks for identical or similar goods and services
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:
- the use of the mark must have resulted in the possibility of the public being likely to be confused as to the origin of the goods or services;
- there is a possibility of association between the two marks.
To establish the above criteria the following factors will be taken into account by a court:
- how widely the trademark is recognised on the market for the goods or services it represents;
- the association between the two marks;
- the similarity between the two marks and the goods or services.
Conflict with a mark of repute
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:
- as a result of the similar or identical mark unfair advantage is taken of the registered mark;
- as a result of the similar or identical mark there has been a detrimental effect to the distinctive character and reputation of the registered trademark.
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.