Understanding UK trade mark infringement
Establishing a presence in today’s saturated and competitive business world is all about creating a brand that connects with customers on a personal level. Whether it’s through a name, a logo or a memorable slogan, your trade mark is a unique identifier that distinguishes you from your competition.
But what occurs when another company emerges with something strikingly similar? You may be dealing with trade mark infringement, logo infringement, or even brand infringement, potentially sabotaging your entire branding.
In some cases, especially when a similar mark is still in the application stage, it may be necessary to take action by filing a trade mark opposition before the mark is officially registered.
Trade mark infringement guide
Many businesses view trade mark rights as a mere legal formality, but the reality is that they are essential for protecting your trade mark from trade mark violations. In the UK, trade mark law plays a crucial role in addressing intellectual property infringement, providing legal frameworks for trade mark enforcement and remedies for those impacted by trade mark infringement cases.
This guide will cover:
- How to prove trade mark infringement under UK law
- What is trade mark infringement?
- What constitutes infringing on a trade mark?
- Examples of trade mark infringement
- Defences to trade mark infringement
- Trade mark infringement in digital marketing
- How businesses can protect their trade mark characteristics under UK trade mark law
Whether you are dealing with trade mark violation or seeking to enforce trade mark laws, understanding your legal power is key to protecting your business.
What is needed to prove trade mark infringement?
If you suspect that trade mark enforcement is necessary, there are certain legal criteria that must be satisfied to successfully bring forth a trade mark infringement claim.
1. Rightful owner of trade mark
In order to file a trade mark infringement claim, you must prove ownership of a registered trade mark under UK law.
A trade mark infringement case in the UK requires registration with the UK Intellectual Property Office (UK IPO) and additional proof that you are the rightful owner of the mark. For more on registering your trade mark, view our detailed guide on Key Requirements for Registering a UK Trade Mark.
2. Used in the course of trade
The accused party, whether an individual or a business, must have utilised the symbol to conduct business activities. This means that the mark must be used in a commercial setting, not just for personal or private purposes.
It is important to note that there has been some controversy regarding the meaning of the phrase “using a sign.” Pre-1994 law, it was required that the mark was 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.
Examples of trade mark infringement in business:
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- 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
These are all grounds for trade mark violation if they mislead customers.
3. Used in the senior trade mark’s territory
The infringing sign must be used within the same geographical area where the original trade mark is registered.
For online businesses, the physical location of the website’s hosting is essentially insignificant. Even if the website is hosted elsewhere, if the intent is to cater to the audience within the senior trade mark’s territory, then the infringement still satisfies the territorial element.
4. In relation to goods or services
The infringing trade mark must be utilised in relation to the goods/services that the original mark is registered for, except in cases where the original mark has a reputation.
- For example, a tech store named “Apples” would infringe on Apple’s current trademark, versus a small café named “Apples Café,” would not – as it is in a completely different category of goods/services.
Grounds for trade mark 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/services being offered are identical to those of your business.
- This is often the case with counterfeit products. For example, a fake designer bag that is visually identical to the original being sold on the street.
2. Similar marks or goods (likelihood of confusion)
Some trade mark infringement cases fall in a grey area. This type of case occurs when marks and goods/services are similar enough to create a likelihood of confusion. When this happens, the typical consumer may reasonably mistaken the goods or services as coming from the same source.
- For instance, if two coffee shops within 5 miles of each other both have a rainbow logo and both have the word “funky” in their title, a reasonable person may mistakenly believe they are connected, even though one is named “Funky Donuts” and the other, “Funky Café.”
3. Marks with a reputation (dilution & free-riding)
This ground specifically protects trade marks with a reputation. Even if the infringer isn’t offering identical goods/ services, if their use of a similar mark dilutes or tarnishes a well-known brand, then it may still be a trade mark violation. This is referred to as someone attempting to “free-ride” on a brand’s established reputation.
- For example, a new perfume line named after a famous luxury car manufacturer. Even though they are in two completely different markets, the consumer is so well-associated with the car brand that they could think the perfume is affiliated with them.
Trade mark infringement in digital marketing
- Such as, “Our sneakers are 35% more environmentally-friendly than Nike’s.” This type of mention is allowed, however, saying “The Kardashians love our sneakers,” when the Kardashians have not accepted that endorsement, is not.
Similarly, a competitor relying on a registered trade mark in order to rank higher for their products is not allowed.
- For instance, a sneaker company relying on the keyword “Nike” in order for their own sneakers to appear in Nike’s search results.
The key here is whether or not the online advertising is targeted at the audience where your trade mark is registered. However, having an international trade mark can simplify this process.
If you’re concerned about protecting your trade mark in international markets, consider reading our guide: Secure the International Trademark – Before It’s Too Late.
Defences against trade mark infringement
If you are accused of infringing on a trade mark and you’re seeking ways to protect yourself from liability, there are legal defences available under the Trade Marks Act 1994 as well.
1. You had permission (consent)
If the owner of the trade mark has granted you permission to utilise the mark through a licensing agreement or other form of consent, there is no infringement involved, as their consent prevents any allegations of unauthorised use.
2. Exhaustion of rights
If you can demonstrate that the trade mark owner’s rights have been exhausted, you may be able to avoid liability. This would occur if the trade mark registration was either declared invalid, revoked or has expired. If any 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 legal defence
UK legislation offers exceptions in cases where specific applications of a brand name are deemed lawful and do not amount to violation of trade mark rights.
A. Descriptive use
You can use a trade mark descriptively. This means that if you’re using a trade mark to describe characteristics of your goods or services (like their quality or intended purpose), rather than as a brand, it is allowed – as long as the use is honest and fair.
B. Using your own name
If the trade mark is of your personal name, you are allowed to the mark – so long as it is done 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 an affiliation 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 legally exempt uses, but these are far less commonly invoked.
4. Invalid or revoked trade mark
In some cases, one can successfully challenge the validity of the trade mark in order to avoid liability for infringement. A mark is typically considered invalid when it is improperly registered for reasons like:
- Being too generic or descriptive
- Having been unused for years
If the trade mark is revoked, the trade mark owner loses enforceable rights.
If you’d like to learn more on the defences involved, our guide on defences for a trade mark infringement claim explains this further.
Reach out for expert advice
Whether you suspect your trade mark has been violated or you’ve been charged with infringing on someone’s mark, it is 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 protect your intellectual property rights or consider defence strategies.
