Trademark Infringement – Where Do I Stand?
10 May 2021
MKB Law’s litigation and dispute resolution team are presently acting for a number of clients in cases arising from alleged trademark infringement.
Trade marks play a vital role in helping distinguish goods and services that are available on the market. Disputes all to often arise when a third party uses a trade mark that is either identical or similar to an existing trade mark. This has the potential of resulting in the dilution of the distinctiveness of a particular brand. When such a situation arises, it is important to have an awareness of the general law and principles surrounding this area. In this series we will focus on the legal protection afforded to registered trade marks.
Legislation – Trade Marks Act 1994
The law relating to trade mark protection in Northern Ireland and the UK generally is set out in the Trade Marks Act 1994.
Infringement of a Registered Trademark
Under Section 10 of the Trade Marks Act 1994 there are three circumstances in which a registered trade mark will be infringed. These include where a third party uses in the course of trade:
- An identical mark on identical goods or services to those for which the earlier mark is registered
- An identical mark on similar goods or services those for which the earlier mark is registered and where there is a likelihood that the public will be confused, or
- A similar mark on identical or similar goods and services to those for which the earlier mark is registered, where there is a likelihood that the public will be confused.
As with any litigation it is particularly important in trade mark infringement cases that sufficient evidence can be produced in order to establish a sound case.
Copies of the respective trade marks in question and details of the goods or services will always be required. Evidence of customer confusion, for example, statements from consumers who have mistakenly purchased a product or service believing it to be the claimants is another form of evidence which can prove helpful in trade mark infringement cases.
If a plaintiff can prove that they have sustained a loss then often a claim for damages and an order for delivery and destruction of goods or services associated with the trade mark may be appropriate. In other instances, an injunction may be required to prohibit a third party from selling or promoting goods and services associated with the offending trade mark.
The defences available for trade mark infringements are contained in Section 11 of the Trade Marks Act 1994. An awareness of the following defences is essential for plaintiffs to understand prior to commencing a claim.
A registered trade mark is not infringed by:
- The use of an individual’s own name or address
- The use of signs or indications relating to the type or characteristic of the goods or services or their intended purposes provided that the use is in accordance with honest practices or commercial matters
- The use of the trade mark which is necessary to indicate the intended purpose of a product or service
If you require advice or assistance in relation to a potential trade mark infringement, please do not hesitate to contact Jonathan Jackson and Mollie Thompson in the litigation and dispute resolution team at MKB Law.