Establishing a presence in the saturated and competitive business world of today involves creating a brand that connects with customers on a meaningful level. Whether it’s a logo or a memorable slogan that distinguishes you from others, it’s crucial in stand out. But what occurs when another company emerges with something extremely similar to your trademark that you’ve painstakingly built over time? Trademark Infringement.
Trademarks are often viewed as a mere requirement but their significance goes beyond that perception. They serve as a protection for your brand against counterfeits and imitations. By establishing a brand identity, trademarks offer customers a sense of trust and dependability in your products or services in the long run.
Trademark violation has the ability to undermine your brands visibility and confuse customers while also damaging your reputation over time. This blog post will delve into the details of trademark infringement in the United Kingdom. It will outline what is needed to bring forth a claim as well as defences for when one is accused.
What is Needed to Prove Trademark Infringement?
If you suspect that someone is violating your trademark rights and you want to pursue action against them, there is certain criteria that must be satisfied.
1. You Must Own a Registered Trademark
In order to bring an infringement claim, you must prove that the trademark is registered with the UK Intellectual Property Office (UK IPO). You must also prove that you are the rightful owner of the mark.
2. Used in the Course of Trade
The entity accused of infringement, whether an individual or a business, must have utilised the symbol to conduct business activities. This means that the mark should be used for professional reasons and not simply for personal uses.
“Use” in the course of trade can include:
- Affixing the sign to goods or packaging.
- Offering or selling goods, or providing services under the sign.
- Importing or exporting goods under the sign.
- Using the sign as part of a business or company name.
- Using the sign in business documents or advertisements.
- Comparative advertising, provided it follows regulations on misleading marketing.
- Note: This list is non-exhaustive.
Three Grounds for Trademark Infringement
Once the above is satisfied, there are three key grounds for claiming infringement, covered under the Trade Marks Act 1994.
1. Identical Marks and Goods (Double Identity)
This is the most undeniable type of infringement. Double Identity applies when the infringing mark is perfectly identical to yours and the goods or services being offered are identical to those of your business as well.
This is often the case with counterfeit products, such as a fake designer bag with no visible difference from the original being sold in the street.
2. Similar Marks or Goods (Likelihood of Confusion)
Sometimes, however, there are cases that lay in the grey area. This type of infringement occurs when marks or the goods (or both) are similar enough that they create a likelihood of confusion. In this case, the consumer may reasonably mistaken the goods or services as coming from the same source.
This type of situation could occur if, say, two coffee shops within 10 miles of each other both have a rainbow donut logo and both have the word “funky” in their title.
3. Marks with a Reputation
This ground protects specifically trademarks with a reputation. Even if the infringer isn’t offering the same goods or services, if they are using a mark similar to the widely popular brand then it could still be considered dilution or tarnishment of the famous brand. This is referred to as someone attempting to “free-ride” on a brand’s established reputation.
This could be demonstrated by a new perfume line named after a very well-known luxury car manufacturer. Even though they are selling in two completely different markets, the consumer is so well-associated with the car brand that they could think the perfume is being sold by them.
Avoiding Liability for Trademark Infringement
If you find yourself, instead, facing allegations of trademark infringement and you’re seeking ways to protect yourself from liability, there are specific defences available under the Trade Marks Act 1994 as well.
1. You Had Permission (Consent)
If the owner of the trademark has granted you permission to utilise the mark (via a licensing agreement or another form of consent), there would be no infringement involved in using it with their approval as their consent eliminates any allegations of use
2. Exhaustion of Rights
If you can demonstrate that the rights of the trademark owner have been exhausted, you may be able to avoid being held responsible. This would mean that the trade mark registration has either been declared invalid (the trade mark should not have been registered) or revoked (the trade mark should no longer be registered). If either of these happen, then the owner of the trade mark has lost their exclusive rights to the mark.
3. If the Use of The Sign is Within a Defence
UK legislation offers protections in cases where specific applications of a brand name are deemed lawful and do not amount to violation of rights.
A. Descriptive Use
You can use a trade mark descriptively. This means that if you’re using the mark to describe characteristics of goods or services (like their quality or intended purpose), rather than as a brand, it’s allowed as long as the use is honest and fair.
B. Using Your Own Name
If the mark is of your own name, you are allowed to use it if done so in an honest matter. Nonetheless, this defence will not work if it is being used in a way that confuses consumers into thinking that there’s a connection between your business and that of an existing trademark.
C. Other Legitimate Uses
There are a few other defences available for trademark infringement, , such as the use of a mark in non-commercial contexts or for specific purposes allowed by law, but these are far less commonly invoked.
4. Invalid or Revoked Trademark
In some cases, one can successfully challenge the validity of the trademark in order to avoid liability for infringement. A mark is typically considered invalid when it is improperly registered for reasons like being deemed too generic or descriptive. A mark can also be revoked when it has not been used for numerous years. In both of these circumstances, the trade mark owner loses their full enforceable rights.
The Trademark Use Requirement
For trademark infringement to be proved, the unauthorised use of the mark must meet the below elements:
1. In the Course of Trade
As previously mentioned, the sign must be used in the course of trade, meaning in a commercial context for economic gain.
Additionally, this use must affect or be liable to affect the essential functions of the original trade mark, which is to guarantee consumers the trade origins of the goods or serviced being offered.
It is important to note that there has been some level of uncertainty regarding the meaning of the phrase “using a sign.” Pre-1994 law, it was required that the mark was being explicitly used as a trade mark to indicate the origins of the goods or services. However, the 1994 Act expanded the concept so that it includes use in any type of business context.
2. In the Territory of the Senior Mark:
The infringing sign must be used in the same geographical area as where the original trademark is registered.
It is important to note that using the sign in online platforms that are not UK-based can cause issues. The main dictator is whether or not a UK audience is being targeted. If the intent is to cater to average UK consumers, then it still satisfies the territorial element.
3. In Relation to Goods or Services
The mark must be utilised in relation to the products or services that the trademark is registered for.
There needs to be a connection between the trademark and the goods or services provided by another company. This is created when the mark is utilised to differentiate the party’s goods or services. This can happen in comparative advertising or keyword advertising (when a third party employs the trademark to promote its own products).
Reach out for expert advice
Whether you suspect your trademark has been violated or you’ve been charged with infringing on someone’s mark, it’s important to act promptly. Knowing where you stand legally can significantly impact the protection of your brand and how you respond to any allegations. Contact Freeman Harris Solicitors to safeguard your intellectual property rights or consider defence strategies.
