A beginner’s guide to trademark infringement
The infringement of a trade mark – also written and acknowledged as trademark or trade-mark – relates to the unauthorised use of a registered trade mark by any third party on any goods or services identical with the goods or services specified on the register.
There are two abbreviations used by UK businesses to demonstrate their trade mark rights:
o The term ‘RTM’ is how intellectual property professionals refer to Trade mark rights holders in the UK use the ® symbol to indicate a trade mark is registered.
o The abbreviation ‘TM’ is used in the UK to indicate that a company/business is using something – be it a word, symbol or combination of the two – as a trade mark but it is currently unregistered.
The infringement of trade marks and copyrights can be criminal offences and also actionable in civil law.
Potential UK trade mark infringements
The following trade mark violations are cited in the Trade Marks Act 1994:
o Section 10(1) Trade Marks Act An unauthorised third party utilises a mark that is identical to a registered trademark and placed on like-for-like goods and services. It must be reproduced without modification – even minor modifications unnoticeable from the average consumer’s perspective will be considered identical for the purposes of trade mark infringement.
o Section 10(2)(a) & (b) Trade Marks Act Where (a) an unauthorised third party places an identical registered trade mark on similar goods and services or (b) a similar trade mark on identical or similar goods and services, thereby creating confusion as to the origin of the goods or services and the possibility of an association between the two trade marks.
o Section 10(3) Trade Marks Act Where an unauthorised third party uses an identical or similar trade mark on goods or services which are not similar, benefitting from the registered trade mark’s existing UK or EU reputation and gaining an unfair advantage; and operating to the detriment of the registered trade mark’s character.
Additionally, a trade mark which benefits from an existing reputation is also infringed if a sign is used in the ‘course of trade’. This occurs when a trademarked sign is used in relation to goods or services identical to or similar to the trade mark to obtain an unfair advantage to the detriment of the registered trade mark.
Dealing with a trademark violation
If you believe your UK trademark registration has been infringed, seek advice from a trademark attorney. They can take action to halt the violation of your trade mark or negotiate to license your trade mark on your behalf.
B2B trade mark disputes are usually handled under civil law. However, Trading Standards Officers supported by the police can help you take criminal action with regards to intellectual property crime.
Prior to any potential legal proceedings, the Registrar of the Intellectual Property Office can impose a cooling-off period to give both sides an opportunity to settle the infringement without the need for full legal procedures.
Is there infringement protection for unregistered trademarks?
According to the Intellectual Property Office no available remedy exists for trade mark infringement if the earlier trade mark is unregistered.
It does however state that some unregistered trademarks may be protected under Common Law and this protection is known as ‘Passing off’.
The Intellectual Property Office states that passing off an unregistered trademark can depend on the following circumstances:
o Whether, and to what extent, the owner of the unregistered trade mark was trading under the name at the time the later trade mark was in use.
o Whether the two trademarks are sufficiently similar, with regard to their fields of trade.
o The extent of the damage that such confusion would cause to the goodwill in the business of the initial unregistered trade mark user.
How can I find out if a similar trademark exists?
It’s possible to find out if a similar trade mark to your registered or proposed trade mark already exists and discover who owns a specific National UK trademark, a Community trademark, an International Registration designating the EU and an International Registration designating the UK.