Whether you own a registered trade mark and want to assess if someone is infringing your trade mark or alternatively you have received a cease and desist letter asserting trade mark infringement against you by the registered owner, this article provides guidance to evaluate the strength of your claim or defence.
Trade mark infringement is governed by the Trade Marks Act 1994 (TMA) and also the Community Trade Mark Regulations. Infringement of a registered trade mark occurs in circumstances where a registered trade mark is used in the course of trade without the proprietor's consent in any of the following circumstances:
1. The sign used by the infringer is identical to the registered trade mark and is used in relation to goods or services which are identical to those for which the trade mark is registered (Section 10(1) TMA).
2. The sign used by the infringer is:
2.1. identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered; or
2.2. similar to the registered trade mark, and used in relation to goods or services which are identical or similar to those for which the trade mark is registered;
and, in each case, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association (Section 10(2) TMA).
3. The sign used by the infringer is identical or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (Section 10(3) TMA).
The advantage of bringing a claim under section 10(1) TMA (point 1 above), as opposed to section 10(2) TMA (point 2 above), is that there is no requirement to show confusion and therefore this can make a trade mark infringement claim much easier to enforce.
Under section 10(2) TMA it is necessary to prove a likelihood of confusion. The following principles apply:
1. It is necessary to consider not only the actual use that a claimant has made of its mark, but also a notional and fair use of the mark in respect of all of the goods and services falling within the scope of the specification in the trade mark registration.
2. A likelihood of confusion may be inferred from the surrounding circumstances. The court is entitled to come to its own view on the risk of confusion between the goods or services of one undertaking and another, even if there is no evidence of confusion.
3. "Confusion" includes a likelihood of association, that is, that the relevant public would think that the goods have the same origin or an associated origin. However, mere association on its own is not enough to satisfy the requirement for a likelihood of confusion.
Although case law has indicated that depending on the nature of the claim, evidence of confusion is not always necessary to support a successful claim, it is certainly assists any claim if such evidence can be obtained.
