We now live in what some may say is the ‘digital era’. The protection of trademarks has become increasingly necessary for businesses. You will often be advised that your trademark should be protected. However, are you advised on what may be considered an infringement?
What is trade mark infringement?
The simple explanation of an infringement is using the same trademark, whether it is a name or a logo, that is already registered by another business entity. The trademark does not need to be identical as likelihood of confusion in the marketplace, by the relevant public, may be sufficient.
What does the law say about trade mark infringement?
According to the Section 10 of the Trade Marks Act, trade mark infringement occurs when:
- an identical mark is used in relation to goods and services offered by the trade mark that is registered in the UK;
- an identical or similar mark is used in relation to goods and services offered by the trade mark that is registered in the UK, where there is a likelihood of confusion in the marketplace on part of the relevant public; or
- an identical or similar mark to a trade mark with a reputation in the UK is used without due cause and takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark
Are there any other provisions for trademark infringement?
The Trademarks Act also has provisions on criminal offences as a result of trade mark infringement, which are usually enforced by the Police and Trading Standards.
If there is accusation of trade mark infringement, there has to be sufficient proof of infringement provided by the accusing party.
An entity, which could be a business or an individual, with a registered trade mark has the right to claim trade mark infringement. It is important to note is that it does not matter who has been trading the longest. Regrettably, this is not a defence. It could lead to a protracted dispute or even expensive court battle.
Are there any defences for trade mark infringement?
In some circumstances, you may be able to use the same registered trademark and successfully argue that it is not an infringement. We outline these defences as follows.
- If another trademark has been registered in relation to the same goods and services as an already existing trademark, there will be no trademark infringement. The trade mark can be invalidated based on the fact that it can cause confusion in the marketplace
- If a trade mark is the name and address of the company, it will not be seen as trademark infringement. This must be in accordance with honest practice and the company must be commonly known by the name used.
- Use of certain indications such as the kind of goods or services, the quality and quantity of the goods or services, the value or geographical origin of the goods or services does not constitute as an infringement of a registered trademark.
- If the name indicates the intended purpose of goods or services, this will be considered as non-infringement of a registered trademak.
- Use of an earlier mark such as an EU trade mark which has existed prior to the filing of a UK trade mark will not be considered a trade mark infringement.
What needs to be done to keep a trade mark protected?
As registered trade marks are time bound. It does not remain registered indefinitely and each jurisdiction will have a period of protection. If you have registered your trademark but have failed to renew it in time, there is a possibility of someone else registering the same trademark as you, since you have lost your protection. Again, it does not matter that you have been trading with this mark for a number of years.
Making a successful infringement claim is not straightforward. Having said that, you should register your trademark once you have identified any potential conflicting trademarks to minimise the risks.