What does “use” mean?
A trademark is deemed to be used if:
It is affixed to the packaging of the goods or the goods themselves.
Goods are exposed for sale, offered for sale, stocked, or put on the market for sale under the trademark.
Goods are exported or imported using the sign.
The sign is used in advertising or business papers.
What does unauthorised use mean?
Trademark infringement happens when someone uses a trademark without the owner's consent.
Owners can choose to sell or license their trademark to others. However, lack of consent alone does not prove infringement. Other conditions must also be met.
To determine that trademark infringement has taken place, it has to be proven that:
The trademark has been used in the course of business or trade.
Its use is covered by one of the TMA 1994’s infringing acts.
The 1994 Trademarks Act specifies that trademark infringements include the following:
An identical mark on identical services or goods.
Similar or identical marks for similar or identical services or goods.
A conflict with a reputable mark.
An identical mark on identical services or goods.
Similar or identical marks on similar or identical services or goods
This is when things may get a little confusing, as if someone uses a trademark that is identical to a registered one for the same goods or services, this is considered infringement.
When there are no changes made, then a trademark is classed as identical if it is copied exactly, without any changes.
Minor changes to a trademark do not usually prevent it from being considered identical; in fact, more significant changes may fall under a different category of infringement.
If a trademark could confuse the public about where goods or services come from, this may also be infringement, courts look at several factors to decide this:
How well-known the trademark is in its market.
Whether there is a link between the two marks.
How similar the goods, services, or marks are.
If a trademark has a strong reputation in the UK, and a similar mark takes unfair advantage of it or harms its reputation, this can also be infringement.
Talk to Orwins about trademark protection
If you are concerned about trademark infringement or want to protect your brand, we can help.
We offer legal advice on enforcing your rights, assessing risks, and taking action where needed, get in touch to discuss how we can support you.
