What counts as trade mark infringement?
The Trade Marks Act 1994 sets out what counts as trade mark infringement. In the UK, a third party (ie an individual or business who does not own the trade mark and has not been given permission to use it) infringes on a registered trade mark by using:
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an identical mark for identical products (eg selling knock-off shoes under ‘Nike’, which could be confused with ‘Nike’)
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an identical mark for similar products (eg marks of separate companies, who are both in the clothing retail business)
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a similar mark for identical or similar products where there is a likelihood of confusion about the origin of the product and/or an association being made between both marks (ie how often will people think of the earlier mark when seeing the later mark)
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an identical or similar mark for dissimilar products, which takes unfair advantage, or damages the reputation of the trade mark (eg one mark is in the retail business, another is in manufacturing, with the former selling low-quality products that could be tied to the manufacturer)
The use of the mark must be in the course of trade (ie used for commercial activity to gain a benefit) and may be oral, for example, over the radio.
Infringing acts also include:
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attaching the mark to goods or packaging
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offering goods for sale or supplying services under the mark
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importing or exporting goods under the mark
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using the mark on promotional material
Can you infringe an unregistered trade mark?
'Unregistered' trade marks will arise automatically when you start to use them in connection with your business. As such marks are unregistered, they are offered less protection against possible infringements. However, unregistered marks may be protected under the laws of ‘passing off’.
Generally, an action for 'passing off' can be raised if the injured party can show that:
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their business has a reputation in the mark and
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others have confused the third party’s brand for the injured party’s brand and
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they have been harmed as a result
Whether a mark was passed off as another will depend on a variety of factors, including:
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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
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whether the two trade marks are sufficiently similar, with regard to their fields of trade
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the extent of the damage that such confusion would cause to the goodwill (ie a particular reputation attached to a business which enables the public to easily recognise goods or services as belonging to that business) in the business of the initial unregistered trade mark user
Are there any defences for trade mark infringement?
The main defences to trade mark infringements include:
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using another registered trademark - ie the registration of a later trade mark was allowed, despite being similar to the earlier trade mark
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the owner of the earlier trade mark knew of the existence of the later trade mark but did not take any action for a period of 5 years - after the 5 years, it is assumed that the owner of the earlier right has effectively consented to the matter mark and can, therefore, no longer oppose it
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using one's own name or address - ie individuals are entitled to use their own names or addresses without infringing a registered trade mark. This does not apply to companies
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any use to indicate characteristics (eg kind, quality, quantity or geographical origin) of goods or services - provided the use is in accordance with honest practices in industrial or commercial matters (eg Sweet Pineapple or Solid Steel)
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any use to indicate the intended purpose of goods or services, especially as accessories or spare parts - provided the use is in accordance with honest practices in industrial or commercial matters
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honest concurrent use - eg if two parties, who were based in different locations, started using the same mark at the same time, there would be minimal chance of public confusion
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the earlier trade mark not being registered at the time of the third party’s infringement - the injured party may however still bring a claim for passing off
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the exhaustion of rights in relation to goods put on the market in the UK or European Economic Area (EEA) - ie a registered trade mark is not infringed by the use (eg any subsequent commercialisation or re-sale) of the trade mark in relation to products placed on the market in the UK or EEA by the trade mark owner (or with their consent)
Defences to infringements exist to protect the honest and fair use of trade marks.
How can I avoid infringing another’s trade mark?
Before starting to use a trade mark, you should check if a trade mark similar to your registered or proposed trade mark already exists (and, if so, who owns it). To find out if a UK trade mark exists, you can search the Intellectual Property Office (IPO) trade mark register. You can search the register by trade mark number, owner name and by keyword, phrase or image. You can also search the IPO’s online journal for any trade mark applications that have been accepted in the last 7 days.
You may be able to carry out similar searches for international trade marks. For example:
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for any international trade marks registered with the World Intellectual Property Organisation (WIPO), you can search the WIPO’s Global Brand Database
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for any EU trade marks registered with European Intellectual Property Office (EUIPO), you can search the EUPO’s register
To avoid potentially infringing on someone’s unregistered trade mark, it is a good idea to search online and check relevant social media channels and marketplaces.
Another way to use an existing trade mark is by entering into a Trade mark licence with the owner. A licence gives a third party (known as a ‘licensee’) permission to do something with a registered trade mark that would otherwise be an infringement of the owner's rights. When a trade mark licence is entered into, care must be taken not to go beyond the terms of the agreement, as this may count as trade mark infringement. For more information, read Licensing trade marks.
Alternatively, you may consider speaking to the trade mark’s owner and asking them to transfer (or ‘assign’) the trade mark to you. This can be done using an Assignment of intellectual property.
Whether a trade mark is being transferred or licenced it is important that the document covers your specific needs. Consider speaking to a lawyer to have a bespoke document drafted.
If you are unsure about trade marks or trade mark disputes, Ask a lawyer for more information.
To find out more about the steps you can take if someone has violated your trade mark, read Remedies for intellectual property right infringement and Reaching an agreement - intellectual property infringement.
