We often get asked by prospective clients who have been accused of trade mark infringement; on what basis does a trade mark owner have a right to claim infringement?
For sake of clarity, the answer is simple, a trade mark holder who has a registered trade mark* which is either identical or similar to your brand name would have a right to claim trade mark infringement because of exactly that. You have an identical or similar trade mark to them, and under broadly the same category of services.
Their claim is based on the section 10 of the Trade Marks Act 1994.
2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
https://www.legislation.gov.uk/ukpga/1994/26/section/10
The bolded part is what the trade mark holder must prove that because the alleged infringing party are using an identical sign for similar goods/services, or vice versa, there exists a likelihood of confusion or association on the part of the public.
Likelihood of confusion caused by a trade mark
There is a test for likelihood of confusion and it has been summarised as follows:
- there must be use of a sign by a third party within the relevant territory
- the use must be in the course of trade
- it must be without the consent of the proprietor of the trade mark
- it must be of a sign which is at least similar to the trade mark
- it must be in relation to goods or services which are at least similar to those for which the trade mark is registered
- it must give rise to a likelihood of confusion on the part of the public
In terms of possible defences, the first defence that you can rely on is that the original trade mark was not validly registered. A trade mark would be invalidly registered if it does not satisfy the requirements in section 3 and 5 of the Trade Marks Act 1994, the absolute and relative grounds for refusal. It can argue that the trade mark is not distinctive in relation to the goods if this is the case.
Trade mark infringement can become complicated, and it’s best to seek advice from trade mark solicitor like us, so contact our firm today, and we can discuss how we can help you.
N.B. Unregulated trade mark rights exist, but the burden of proof is very high on the unregistered trade mark holder to prove goodwill and registration.