Infringement of trademark
The trademark legislation provides that the proprietor is entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with the trademark in relation to goods or services which are identical to those for which the trademark is registered.Where the mark is identical. There is no requirement to prove confusion on the part of customers.
The use of an identical or similar sign for goods or services regardless of whether they are identical similar or dissimilar is an infringement if it takes unfair advantage of this distinctive character or refusal of the mark.
The use of an identical or similar sign similar goods or services or similar sign for identical goods or services is an infringement if there is a likelihood of confusion.
In cases other than in the first category, the owner of the trademark must furnish evidence of confusion unfair advantage detriment et cetera. The position is assessed from the hypothetical position of the well-informed observant customer looking at the mark as a whole. He may not, for example, notice subtle differences which are not immediately obvious between the two marks.
A mark be identical further are differences but were viewed as a whole the differences are so insignificant that they go unnoticed by the average consumer.
The proprietor must be making genuine use of the registered mark within the United Kingdom. In the case of an EU trade market, it must be used within more than a single territory. A website directed at UK (or in the latter case the European Union) will usually suffice.
The essence of infringement is that it prejudices the interests of the registered proprietor in relation to his investment in the relevant goodwill.
The EU directives place a slightly different emphasis They emphasise the function of the trademark as a guaranteed indication of origin.
Comparative Use
The issue arises in connection with ad words containing a rival’s trademark name. This may have an adverse effect on the trademark holder as it may cause users to be believed there is a connection with the proprietor.
The Trademark Act permits honest and fair comparative advertising. The Unfair Consumer Practices legislation also covers the matter.
Comparative advertising is permitted in principle provided it does not
- create confusion between the owner of the mark and the competitor
- discredit or degenerate the trademark trade names or
- take unfair advantage of the reputation of the trademark
- present goods or services as imitations or replicas of those bearing a protected mark.
Defences to infringement
It is a defence to infringement to show that the trademark is not validly registered as such may be charged on one of the absolute grounds for refusing registration. It may be that the trademark has become descriptive.
A registered trademark is not infringed by the use of indications concerning
- the kind quality intended purpose value geographical origin the time of production of goods or rendering of services or
- other characteristics of goods or services or the use of the trademark
where it is necessary to indicate the intended purpose of a product or service (as accessories or spare parts) provided the uses in accordance with honest practice in industrial commercial matters.
A registered trademark is not infringed by the use by a person of his own name and address. The defence is not available to newly formed companies or trade names.
Is it is a defence for a person honestly and fairly to use another person’s registered trademark for the purpose of identifying any goods or services as those of the proprietor or licensee. This in effect permits comparative advertisement. This must comply with the conditions in the directive on unfair commercial practices
Under the Paris Convention as implemented in domestic UK law the holder of a well-known foreign trade mark which is known in Ireland may obtain an injunction to restrain its use in the United Kingdom for this would cause confusion. This may apply in respect of a famous international brand et cetera
Where goods have been honestly put on the market within the EU the trademark owner’s rights are generally exhausted.
The rights holder may consent impliedly or by acquiescence to the use of a trademark by a third party. The legislation provides that the owner of an earlier mark acquiescence another person’s use of the mark for over five continuous years loses his right to apply for the invalidity of a later mark take steps to oppose its use.
Remedies for infringement of trademark
The remedies of damages injunctions accounts or otherwise are available in respect of the infringement of a trademark in the same way in as in respect of any other property right.
The following additional remedies are provided by statute
- in order against the infringer to erase or remove the offending sign if this is not possible to destroy the relevant goods
- to deliver up the infringing goods or material held in the course of business
- orders in relation to their disposal
- damages declaration injunction against groundless threats of legal action.
The court may in proceedings grant an injunction damages search and seizure orders et cetera.
Infringement may constitute a criminal offence. There are defences of not having reasonable grounds to suspect that there was an infringement apply.
It is not permitted to threaten to take proceedings which is not property grounded. It may be the subject of a claim for breach of statutory duties. Any person aggrieved may bring proceedings for relief for the has been an unjustified threat to bring proceedings for infringement of a registered trademark.
