The Role of Reputation in Trade Mark Infringement – Trade Mark Infringement Part 3 – The Role of Reputation in Trade Mark Infringement

Introduction – The Role of Reputation in Trade Mark Infringement

Trade marks with a reputation enjoy enhanced protection under the Trade Marks Act 1994 (TMA). This elevated status allows proprietors to enforce their rights even in cases where traditional likelihood-of-confusion tests may not apply. The protection of reputable trade marks under section 10(3) of the TMA reflects their unique value, which extends beyond their function as indicators of origin to include their association with prestige, quality, and consumer trust.

This article explores the framework for protecting reputable trade marks, the legal tests for determining reputation, and the practical implications of landmark cases that have defined the scope of this protection.

Enhanced Protection for Reputable Trade Marks

1. Is in the course of trade;
2. Involves a sign that is identical or similar to the trade mark;
3. Takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark;
4. Occurs without due cause.

Under section 10(3) of the TMA, a trade mark with a reputation is protected against unauthorised use that:

This provision applies regardless of whether the infringing use relates to goods or services that are identical, similar, or dissimilar to those covered by the trade mark.

Key Elements of Section 10(3)

1. Reputation in the UK

To benefit from enhanced protection, the trade mark must have a reputation within the UK. This requires recognition by a significant portion of the relevant public for the goods or services covered by the trade mark. Factors to consider include:

• Market Share: The trade mark’s share in the relevant market.
• Geographical Extent: The geographic areas where the trade mark is known.
• Duration of Use: The length of time the trade mark has been in use.
• Investment in Promotion: The level of advertising and marketing expenditures associated with the trade mark.

The case General Motors Corp v Yplon SA (Case C-375/97) clarified that reputation does not require nationwide recognition. Instead, recognition in a substantial part of the relevant territory is sufficient.

2. Unfair Advantage

Unfair advantage occurs when the infringer benefits from the reputation of the trade mark, leveraging its appeal to boost their own business. For example, using a reputable trade mark to attract consumer attention or create an association with quality can constitute unfair advantage.

3. Detriment to Distinctive Character (Dilution)

Detriment to distinctive character, also known as dilution, occurs when the use of the sign erodes the trade mark’s ability to distinguish the origin of goods or services. This often happens when a trade mark is overexposed in unrelated markets, leading to a weakening of its unique identity.

4. Detriment to Reputation (Tarnishment)

Detriment to trade mark’s reputation, or tarnishment, occurs when the use of the sign damages the mark’s image or prestige. This may involve associating the trade mark with low-quality goods or services, or with undesirable values.

5. Without Due Cause

The infringer must lack a valid justification for using the sign. Examples of due cause might include descriptive use of a sign or legitimate comparative advertising.

Tests for Reputation in Trade Mark Infringement

The following legal principles help determine whether a trade mark has the requisite reputation under section 10(3):

1. Relevant Public:
   • Reputation must be established among a significant portion of the public concerned with the goods or services covered by the trade mark.
2. Market Presence:
   • Courts consider factors such as market share, sales volumes, and advertising efforts to assess the trade mark’s presence in the relevant market.
3. Case Examples:
   • In Sheimer (M) Sdn Bhd’s Application ([2000] RPC 484), the court found that the VISA trade mark had a sufficient reputation in financial services to prevent its use in relation to condoms.
   • Conversely, in Oasis Stores Ltd’s Trade Mark Application ([1998] RPC 631), the EVER READY mark, known for batteries, was not deemed to have sufficient reputation to prevent its use in relation to condoms.

Landmark Cases on Reputable Trade Marks

Adidas-Salomon AG v Fitnessworld Trading Ltd (Case C-408/01)

This case concerned the use of a sign resembling Adidas’ famous three-stripe mark. The court ruled that:

• A link between the infringing sign and the trade mark is sufficient to establish detriment, even without confusion.
• The trade mark proprietor does not need to prove economic harm, as long as the use impairs the trade mark’s ability to serve as a distinctive identifier.

Implications:

• Proprietors should focus on demonstrating a link between the infringing sign and their trade mark.
• This case reinforces the broad scope of protection for reputable trade marks.

Intel Corporation Inc v CPM United Kingdom Ltd (Case C-252/07)

This case addressed dilution and clarified the threshold for detriment to distinctive character. Intel argued that CPM’s use of “Intelmark” for marketing services diluted the distinctiveness of its “Intel” trade mark.

The court held:

• Evidence of a mere link is insufficient; the proprietor must show that the use changes the economic behavior of the average consumer or risks doing so in the future.

Implications:

• Proprietors must provide evidence of actual or potential harm to consumer behavior to establish detriment.
• Businesses using similar marks should ensure they do not dilute the distinctive character of well-known trade marks.

L’Oréal SA v Bellure NV (Case C-487/07)

This case concerned the use of L’Oréal’s trade marks in the marketing of smell-alike perfumes. The court ruled:

• Taking unfair advantage of a reputable trade mark can constitute infringement, even if there is no likelihood of confusion.
• The defendant’s intent to exploit the reputation of the trade mark is a relevant factor.

Implications:

• Proprietors can challenge free-riding on their trade marks, even in the absence of confusion.
• Businesses must avoid using reputable trade marks in a way that exploits their appeal.

Practical Guidance for Proprietors

1. Building and Maintaining Reputation:
   • Invest in marketing and promotion to establish a strong reputation for your trade mark.
   • Monitor market performance and consumer perception to document evidence of reputation.
2. Monitoring and Enforcement:
   • Actively monitor unauthorised uses of your trade mark to identify potential unfair advantage or harm.
   • Take early action to prevent dilution or tarnishment, as delayed enforcement may weaken your claim.
3. Documenting Evidence:
   • Gather evidence of market share, advertising investments, and consumer recognition to support claims of reputation.
   • Collect examples of consumer confusion, economic harm, or reputational damage caused by infringing use.

Conclusion

The protection of trade marks with a reputation under section 10(3) of the TMA underscores their unique value in the marketplace. By offering enhanced safeguards against unfair advantage, dilution, and tarnishment, the law recognizes the broader economic and symbolic importance of reputable trade marks. Understanding the legal framework and its application in landmark cases equips proprietors to enforce their rights effectively and maintain the integrity of their brands.

In Part 4, we will examine the evidentiary challenges in trade mark infringement cases and strategies for proving likelihood of confusion or harm in court.

Sources

• https://curia.europa.eu/juris/liste.jsf?num=C-487/07
• https://curia.europa.eu/juris/liste.jsf?num=C-252/07
• https://ipcuria.eu/case?reference=C-408/01
• https://www.ipo.gov.uk/t-challenge-decision-results/t-challenge-decision-results-bl?BL_Number=O/158/98

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