Trade Mark Infringement. A 4-part series by Michael Coyle of Lawdit and https://trademarkroom.com/

Part 1: The Framework of Trade Mark Infringement

Introduction

Trade mark infringement forms a critical component of intellectual property law, ensuring that trade mark proprietors have the tools to protect their brands and prevent unauthorised use. The Trade Marks Act 1994 (TMA) provides the legislative foundation for trade mark registration, protection, and enforcement in the UK. Initially aligned with EU directives to maintain harmonisation across member states, the TMA now functions independently, reflecting a UK-centric approach following the country’s withdrawal from the European Union (Brexit). Such a shame!! Despite these changes, the principles established under EU law continue to hold persuasive authority in the UK.

This series of articles examines the legislative framework underpinning trade mark infringement, the conditions under which infringement occurs, and the remedies available to trade mark proprietors. Understanding these principles is vital for businesses to safeguard their intellectual property and navigate potential disputes effectively. By all means, cross-refer to our sister company Trademarkroom.com which files trade marks in the UK and across the world. ( www.trademarkroom.com )

Legislative Framework

The Trade Marks Act 1994 is the primary legislation governing trade marks in the UK, defining the rights conferred by registration and the mechanisms for enforcement. Key provisions addressing trade mark infringement include:

• Section 10: Defines the various scenarios in which trade mark infringement occurs, providing a structured approach to determine liability.
• Section 14: Grants the proprietor of a registered trademark the right to bring infringement proceedings.
• Section 92: Establishes criminal offences related to counterfeit goods and other unauthorised uses of trade marks.

The legislative framework of the TMA was heavily influenced by the European Union Trade Mark Directive (First Directive 89/104/EEC and subsequent updates). While Brexit has led to significant changes, the UK retained many of the principles set out in EU law to ensure consistency. Notably, pre-Brexit case law from the Court of Justice of the European Union (CJEU) remains persuasive in UK courts, guiding the interpretation of trade mark law.

Impact of Brexit on Trade Mark Law

The UK’s departure from the EU has brought important changes to trade mark law, with direct implications for businesses operating across jurisdictions. Key points include:

1. Comparable UK Trade Marks: On 1 January 2021, comparable UK trade marks were automatically created for all EU trade marks registered by 31 December 2020. These comparable rights ensure continued protection within the UK but are independent of the original EU trade marks.
2. Separate Applications: Businesses seeking protection in both the UK and the EU must now file separate applications with the UK Intellectual Property Office (UKIPO) and the European Union Intellectual Property Office (EUIPO). This adds complexity and cost for businesses operating internationally. Such a shame!!! Turkey’s voting for Christmas!
3. Role of CJEU Case Law: While UK courts are no longer bound by post-Brexit decisions of the CJEU, they may consider pre-Brexit rulings persuasive. This provides continuity in the interpretation of key principles, such as likelihood of confusion and reputation.
4. International Treaties: The UK remains a party to international treaties, including the Madrid Protocol, which facilitates the registration of trade marks in multiple jurisdictions through a single application.

Nature of Trade Mark Infringement

Under the TMA, trade mark infringement occurs when a registered trade mark is used in the course of trade without the proprietor’s consent. The Act defines three primary scenarios of infringement, each tailored to address different forms of unauthorised use:

1. Identical Sign + Identical Goods/Services:
   • Infringement occurs under section 10(1) when the sign used by the infringer is identical to the registered trade mark and relates to identical goods or services. This is the most straightforward scenario, as there is no requirement to prove confusion. The use itself is sufficient to establish liability.
2. Identical/Similar Sign + Similar/Identical Goods/Services:
   • Under section 10(2), infringement arises when the sign used is:
     • Identical to the registered trade mark and used for similar goods or services; or
     • Similar to the registered trade mark and used for identical or similar goods or services.
   • In these cases, there must be a likelihood of confusion on the part of the public. This includes a likelihood of association, where consumers mistakenly believe there is a connection between the two marks.
3. Sign Detrimental to Reputation/Distinctiveness:
   • As per section 10(3), infringement occurs when a sign identical or similar to a trade mark with a reputation in the UK is used without due cause, and the use:
     • Takes unfair advantage of the trade mark’s reputation.
     • Causes detriment to the trade mark’s distinctive character or reputation.
   • This provision extends protection to marks with a reputation, even where the infringing sign is used for dissimilar goods or services.

Tests for Trade Mark Infringement

The test for infringement varies depending on the relationship between the sign, the trade mark, and the goods or services involved. These scenarios are governed by the following principles:

1. Identical Sign + Identical Goods/Services:
   • Infringement is automatic, with no need to prove confusion or harm. Lawdit v Lawdit – legal services.
2. Identical Sign + Similar Goods/Services:
   • The proprietor must establish a likelihood of confusion. Lawdit v Lawdit in accountancy services.
3. Similar Sign + Similar Goods/Services:
   • Similarly, the proprietor must demonstrate a likelihood of confusion. Lawdit v Laudit – accountancy services
4. Identical/Similar Sign + Any Goods/Services:
   • The proprietor must prove that the use of the sign takes unfair advantage of or is detrimental to the trade mark’s reputation or distinctiveness. Lawdit/Laudit/software/clothing/legal

These tests ensure that trade mark protection addresses not only direct competition but also broader risks such as brand dilution and reputational harm.

Who Can Bring Infringement Proceedings?

The right to bring infringement proceedings is primarily vested in the registered trade mark proprietor, although licensees may also take action under certain circumstances:

1. Trade Mark Proprietor:
   • The proprietor is entitled to bring proceedings under section 14 of the TMA. If the trade mark is co-owned, all co-owners must join the action unless the court grants leave for one proprietor to act alone.
2. Licensees:
   • Exclusive Licensees: These licensees may bring proceedings if the proprietor fails to act within two months of a formal request or if the licence grants the licensee equivalent rights to the proprietor.
   • Non-Exclusive Licensees: These licensees can only bring proceedings with the proprietor’s consent, unless the licence specifies otherwise.

Financial Remedies for Trade Mark Infringement

Infringement proceedings can result in various remedies designed to compensate the proprietor and deter future breaches:

1. Damages:
   • Damages may be awarded to compensate for financial losses caused by the infringement. Under section 9(3), damages are recoverable for acts committed after the trade mark application date.
2. Accounts of Profits:
   • Instead of damages, the court may order the infringer to account for profits earned from the unauthorised use of the trade mark.
3. Injunctions:
   • Injunctions are a common remedy, preventing the infringer from continuing the unauthorised use.
4. Delivery Up and Destruction:
   • Proprietors may seek orders requiring the infringer to deliver up or destroy infringing goods.

Four-Step Analysis of Infringing Use

The Céline Sàrl v Céline SA case (Case C-17/06) provides a structured approach for determining whether a sign constitutes trade mark infringement. This four-step analysis, adopted in UK law, examines:

1. Use in the Course of Trade:
   • The alleged use must occur in a commercial context.
2. Use in Relation to Goods/Services:
   • The sign must be used in connection with marketing, advertising, or offering goods or services.
3. Lack of Consent:
   • The use must occur without the trademark proprietor’s permission.
4. Impact on Trade Mark Functions:
   • The use must affect, or be likely to affect, the trade mark’s ability to identify the origin of goods/services or protect its distinctiveness.

Conclusion

The Trade Marks Act 1994 provides a robust framework for addressing trade mark infringement, balancing the rights of proprietors with the needs of commerce. By understanding the legislative provisions, tests for infringement, and remedies available, businesses can protect their intellectual property and respond effectively to unauthorised use. In Part 2, we will explore landmark UK and EU case law that has shaped the interpretation of these principles.

Sources

• https://www.legislation.gov.uk/ukpga/1994/26/contents
• https://en.wikipedia.org/wiki/Trade_Marks_Act_1994

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