Trademark infringement occurs when a business or individual uses the same trademark as another operating in the same industry. If the trademark is likely to cause confusion amongst consumers or the trademark is so similar that they identify the goods or services to be from the same company, the party who has committed the infringement can be prosecuted.
Furthermore, where the trademark has gained recognition such as that of a well-known brand, an offence of trademark infringement may be committed even if the offender uses a mark which doesn’t cause confusion but it has an unfair advantage in relation to the reputation of the registered company. This can often occur when the business who have ‘copied’ the trademark produce inferior or poor quality products or the products are significantly different from those that the registered trademark holder offers.
When it comes to unregistered trademarks there is currently no remedy available for infringements. Although some trademarks may be covered under Common Law, whether they are protected will depend on a number of factors such as;
- The extent the owner of an unregistered trademark was trading under the name when the new trademark came into being
- Whether the two ‘trademarks’ are very similar
- Whether the trademarks are used by companies operating in the same industry and it is likely that they will cause confusion
Unintentional Trademark Infringement
If you are a business owner and you believe that you may have unintentionally committed trademark infringement, the first step is to seek legal advice from a qualified legal professional. There may be many different routes you can take to resolve the issue but this will often depend on the specific circumstances which relate to each individual case.
In some instances where a trader realises that they are committing an offence, they may stop trading under the trademark or even approach the trademark owner and attempt to resolve the issue through negotiation to a mutually beneficial outcome such as a co-existence agreement.
Business owners who genuinely believe that they are not committing trademark infringement may decide to form a strong defence. The worst case scenario in this situation is that the business owner can be made to change their trademark and carry out full product or service rebranding.
If you are a business owner and you believe that another individual or business is infringing trademark regulations, again it is advised that you seek legal advice. One of the options available is to write to the person who has infringed the trademark, but you must be absolutely sure that the earlier trademark that you own and the actions of the business or individual who has infringed the trademark warrant a written notification. This is important because the law also safeguards traders from unjustified threats of trademark infringement.
Once you have written to the business owner using the trademark, you may be able to negotiate a settlement or if the negotiation fails you may be able to obtain a court order to make the business or individual infringing the trademark to stop trading and pay damages.
The first step in deciding whether there has been a trademark infringement is to check that the trademark has actually been registered. If this is your business then this will be easy as you will know whether it was registered or not. Once you have ascertained that the trademark has been registered, you know that you have certain rights when the registration was complete.
One particular right is outlined in the Trade Marks Act 1994 which prohibits the unauthorised use of the trademark by a third party for products and/or services which are listed on the register.
In addition, there are regulations which prevent any third party from adapting or using the same or similar trademarks for a product or service. These regulations are described in detail in the European Law Agreement on Trade Related Aspects of Intellectual Property Rights.
Unauthorised use of a trademark
When deciding whether there has been a trademark infringement, a business owner should find out whether the alleged business or individual infringing the trademark has sought permission or they have been allowed to use the mark. If they have not been given permission then they should not be using the trademark.
Permission to use a trademark is granted through a licence or sale. However, it is important to note that simply proving that the individual or business using the trademark has not been granted permission is not enough to prove infringement. There are several other factors which need to be considered.
Establishing whether there has been an infringement of the trademark can be difficult and at the very least, the following must be clarified;
- The trademark was used for business use
- The use of the trademark breaches one of the actions outlined in the Trade Marks Act
- Course of Trade
One of the factors when proving a trademark infringement it must be confirmed that the mark is being used for commercial purposes in the course of trade. The course of trade will refer to any business or organisation exchanging money for products or services.
The Trade Marks Act 1994 and Trademark Infringement
Under this legislation, trademark infringement is defined as;
- An identical symbol or mark on the same type of products and services
- The same or similar marks used for similar products or services
- An identical mark on identical products or services
If a business or individual uses a mark which is identical to a registered trademark for exactly the same products or services, a trademark infringement will be committed. This often happens in cases of counterfeit products such as clothing, shoes or merchandise which uses the same logo as the authentic item.
What does ‘Identical’ Mean?
It is important to understand what the term ‘identical’ means when discussing any issue of trademark infringement. For something to be identical it has to be an exact replica without any modifications.
If the trademark has been modified but the modifications are either insignificant or minor, but where they are perceived to be the same by the customer, then they are still classed as being identical. If the trademark has been modified significantly, the individual or business committing the infringement may find that the infringement also falls into another category under trademark infringement legislation.
With counterfeit products it often follows that the people counterfeiting the goods will use an identical mark on products or services which are similar or a similar mark on products and services which are similar. This does not automatically result in an infringement however, unless the following have been confirmed;
- General consumers may confuse the products or services as being from the same company
- It is likely that the uses of the two trademarks are linked to each other
In order to determine the infringement, the court will take into consideration how widely recognised the trademark is, the association between the two trademarks and the similarities between the products or services and the two marks
As with any form of law, trademark infringement is complex. Certain elements have to be proved to show that an infringement has occurred and only then can the innocent party take action to prevent the mark being used by another business or individual.
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