What is trademark infringement?
Infringement occurs when a business uses a name or logo that is already registered by another entity.
The marks do not need to be identical; a likelihood of confusion among the relevant public may be enough.
What does the law say about trade mark infringement?
According to 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 the part of the relevant public
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 contains provisions on criminal offences arising from trade mark infringement, which are usually enforced by the Police and Trading Standards.
If a business is accused of trademark infringement, the party making the claim must provide sufficient evidence for it to be a successful claim.
Thus, when bringing an infringement claim, you must be the business or individual with the registered trademark in question.
The length of time a party has been trading is not a defence; in fact, disputes can become lengthy and costly if not resolved early.
Are there any defences for trade mark infringement?
There are circumstances where the use of a registered trademark may not amount to infringement. The main defences are set out below.
If a trademark is registered for the same goods or services as an existing mark, infringement does not arise; however, the later mark may be invalidated if it is likely to cause confusion.
Using a trademark that is the name and address of a company is not infringement, provided it is done in line with honest practices and the company is commonly known by that name.
Describing the kind, quality, quantity, value, or geographical origin of goods or services does not infringe a registered trademark.
Using a name to indicate the intended purpose of goods or services is not considered infringement.
Use of an earlier mark, such as an EU trademark that predates a UK filing, is not infringement.
What needs to be done to keep a trade mark protected?
Registered trademarks are time-limited and must be renewed within the relevant period for each jurisdiction.
If a trademark is not renewed correctly, protection is lost, and another party has the ability to register the same mark, regardless of how long it has been in use.
Bringing a successful infringement claim isn’t easy, but with the right legal assistance it can be much more understandable.
Registering your trademark after checking for potential conflicts helps to avoid these issues, so be sure to conduct your due diligence when registering or renewing.
Talk to Orwins for legal guidance on trademark infringement
Trade mark infringement disputes in the UK are rarely straightforward, particularly in the digital era where branding is constantly developing.
While the law provides clear protection for registered trade marks under the Trade Marks Act 1994, there are also important exceptions and defences that can significantly affect the outcome of any claim.
We advise you to seek legal advice early on, as this can make a significant difference in achieving a practical and commercially sensible resolution.
