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.
The Trade Marks Act 1994
The Trade Marks Act 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 of counterfeit clothing as real by using the identical brand logo on an identical item of clothing.
What does it mean for a mark to be identical?
For a mark to be seen as identical it must be reproduced without any modifications made to it.
What happens if the mark has been modified?
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 then 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 the act.
Identical or similar marks for identical or similar goods and services
As is often the case in counterfeit clothing or something similar 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. This will not automatically result in a trademark infringement however as in order for there to have been an infringement the following must be established:
- 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
- That there is a possibility of association between the two marks
How is this established?
In order 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 specified infringement is to deal 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.
In order to establish infringement in that case the owner of the registered trademark will have to establish that the registered trademark 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.
Detrimental to the distinctive character
Where the use of another mark is said to be detrimental to the distinctive character of the registered mark it means that the registered mark’s association with certain goods or services is no longer immediately recognised.