Infringement

Question 1

What are the three main grounds of infringement?

Answer 1

Section 10(1) - “Double identity” - use of an identical registered mark for identical goods/services (no likelihood of confusion required)

Section 10(2) - Due to the identity or similarity of the marks and the identity or similarity of the goods/services, there exists a likelihood of confusion.

Section 10(3) - The registered mark has a reputation and as a result of the use of the later mark, there is a link between the marks in the minds of consumers. It then has the affect of taking unfair advantage and/or being detrimental to distinctive character and/or reputation of the registered mark. The later mark is also used without due cause.

Question 2

How does the “own name” defence work under section 11?

Answer 2

• The own name defence only applies to personal names. That means that if you use your registered company name and it infringes a registered trade mark, you cannot rely on the defence under section 11.
• The own name defence for personal names only applies if the use of the person’s own name “is in accordance with honest practices in industrial or commercial matters”. In practice, this means that the use does not exploit, cause confusion or take advantage of the registered name, such as by offering new and similar goods/services.

Question 3

How does the “use of one’s own registered trade mark” defence work under section 11?

Answer 3

• The use of an earlier registered trade mark is not infringed by the use of a later registered trade mark, provided the earlier trade mark could not invalidate the later registered trade mark.

Question 4

How does the “Honest use as descriptive term” defence work under section 11?

Answer 4

• It is a defence to trade mark infringement if the use of a registered trade mark is used in a descriptive manner, so long as that use is in accordance with honest commercial practices.

Question 5

How does the use of an earlier local right defence work under section 11?

Answer 5

A registered trade mark is not infringed by the use of an unregistered local right in particular locality, provided the earlier right was used either before the first use or first registration of the later mark.

Question 6

What is required to make a director of a company liable for trade mark infringement as an accessory?

Answer 6

1) Need to show that they had “knowledge of the essential facts which make the act done wrongful”.
- This includes turning a blind eye to the facts.

2) Knowledge of the following is required:
- For infringement due to likelihood of confusion, this means knowledge of the earlier trade mark.
- For infringement based on reputation, the director needs to have knowledge that (i) that the claimant’s TM has a UK reputation, (ii) that the use of the sign leads to a link, (iii) use causes unfair advantage or detriment and (iv) that the use is without due cause (essentially need knowledge of all elements of infringement).

Question 7

What is comparative advertising? Is it infringement?

Answer 7

Comparative advertising is where a third party uses a trade mark registration in their own advertising as a way to advertise their product.

Comparative advertising counts as trade mark infringement under s10(4)(e) of the TMA, unless it complies with various requirements under to the Business Protection from Misleading Marketing Regulations 2008

Question 8

Generally, what constitutes infringing comparative advertising?

Answer 8

Making non-verifiable claims or comparisons e.g., about quality of the claimant’s goods or services.

Misleading or inaccurate uses of the trade mark, such as where it takes unfair advantage of the registered mark or causes confusion.

Question 9

If a client comes to you to complain about infringing comparative advertising, what action could you recommend?

Answer 9

• Initiating infringement proceedings
• An ASA (Advertising standards authority) complaint - the ASA can review and adjudicate.
• Investigate the advert in more detail e.g., to verify information.