Trademark infringement

Solicitors actively involved in advising clients on trademark infringement litigation and other forms of brand protection

Solicitors here are experienced in matters of licensing, transfer and litigation. We have an active practice in the protection and licensing of, as well as litigation about trademarks.

Brands It is difficult to go anywhere or do anything without encountering brands (trading names, logos and get-up). Brands are most companies' most valuable assets because they: Indicate the source or origin of products Guarantee quality Advertise products Trade mark laws attach primary importance to the origin function of brands although increasingly recognition is given to their guarantee and advertising roles.

If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public.

Brand protection United Kingdom (UK) law offers two main forms of brand protection: registered trade marks;  and passing off. Registration is not compulsory but has the following advantages: Registration is prima facie proof of the claimant's entitlement to the mark. Registration may be obtained before using the mark safeguarding any pre-launch investment. Registration generally allows an action for infringement to be brought without proof of damage. Registration gives notice to third parties of the proprietor's interest in the mark. The common law action of passing off depends not on registration but use of a mark.  It has the following drawbacks: Passing off calls for proof of the claimant's goodwill in the mark. Passing off cannot protect an unused mark. Passing off depends on damage or likely damage to goodwill. Passing off requires a heavy evidential burden to be discharged in every case. Registered trade mark infringement and passing off are cumulative: they can be argued together on the same set of facts. In some jurisdictions, like the Community Trade Mark, protection is non-existent unless the mark is registered.

Infringement of a UK registered trade mark The infringement criteria in s. 10 TMA mirror the relative grounds for refusal of registration of a sign as a trademark.  The defendant infringes a UK registered trade mark by using: an identical sign for identical products; an identical sign for similar products or a similar sign for identical or similar products where there is a likelihood of confusion including association; an identical or similar sign even for dissimilar products where the trade mark has reputation and the defendant's use without due cause is detrimental to the trade mark. The defendant's use must be in the course of trade and may be oral, for example, over the radio. Infringing acts include: Affixing the sign to goods or packaging Offering goods for sale or supplying services under the sign Importing or exporting goods under the sign Using the sign on promotional material There is uncertainty over whether the defendant must use the sign as a trade mark, that is, to indicate the origin of products (R v. Johnstone (2003)). The ECJ ruled in (2002) and confirmed in Arsenal Bellure (2009) that the relevant issue is likely damage to the trade mark including to its functions of communication, investment and advertising. While purely descriptive use would not have this effect (Hölterhoff (2002)), use of the names and logos of football clubs on unauthorised merchandise by street traders would (Arsenal). Likewise, mere use of a company name constituting another's trade mark is permissible (Céline (2007)) whereas use of established perfume brands in smell-alike advertising is not (Bellure (2009)). The ECJ is shortly expected to rule on whether the reservation and use of adwords constitutes trade mark infringement (Google et al). Hopefully, those rulings will bring further clarification. Civil remedies for trade mark infringement include injunctions, damages or account of profits, and delivery up and disposal of offending products.  Criminal penalties are also available. An action for infringement can be brought by the proprietor of the mark and in certain circumstances exclusive and non-exclusive licensees.  Groundless threats of proceedings for infringement of a trade mark are actionable by the defendant (s. 21 TMA).

We offer a fixed charge initial analysis of your case with options and recommendations

Defences to UK registered trademark infringement The fair use defences in s. 11 TMA cover: Use of another registered trade mark. Use of one's own name or address. The use of a company name is included. Use to indicate the suitability of spare parts or other characteristics of products. The latter two defences are qualified by the requirement that the defendant's conduct must be in accordance with honest commercial practices. Exhaustion of rights within the EC forms an important defence for parallel importers.  The defence does not apply to goods put on the market in countries outside the EC by the proprietor or someone with the proprietor's consent (Zino Davidoff (2001)).

Unregistered trademark protection - the law of passing off The classic statement of passing off is that "nobody has any right to represent his goods as the goods of somebody else" – Lord Halsbury in Reddaway v. Banham (1896).  Passing off also extends a remedy where: The defendant passes off the claimant's products as being of superior quality - Spalding v. Gamage (1915) The defendant passes off products as meeting a recognised trade description like "Advocaat" – Erven Warnink v. Townend (1979) The defendant passes off the claimant's products as the defendant's own, "reverse passing off " - Bristol Conservatories (1989) The defendant passes off products as approved or endorsed – Irvine v. Talksport (2003) In order to succeed in an action for passing off the claimant needs to establish that: (a) the claimant's products have acquired a goodwill or reputation in the market and are known by some distinguishing feature.  That feature can range from a lemon shape container - Jif Lemon (1990) to a telephone number - Law Society v. Griffiths (1995); (b) in using a similar feature the defendant makes a misrepresentation leading or likely to lead the consumer to believe that the defendant's products belong to the claimant or are in some way connected with the claimant.  The defendant need not act intentionally;  (c) the claimant suffers or is likely to suffer damage as a result.  Remedies for passing off include interim and final injunctions and damages or an account of profits.

“Lastly, may I just thank you and your team for the very professional and thorough way that you have dealt with this issue on my behalf. It has been a huge relief to have your support.”