Auntie Jane's Trade Mark Tips: No. 9 Infringements

Rolls Building

Author Judicial Office UK Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

In my fourth trade mark tip, "What is a Trade Mark?" I wrote that a trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. That is the function of trade marks.

There are three ways in which that function can be interfered with:-

The first is by using a sign that is identical to the mark in relation to goods or services that are identical to those for which the mark is registered.  That is barn door counterfeiting,  There is no need to show that anyone is deceived or confused,  It is actionable under s.10 (1) of the Trade Marks Act 1994.

The second way is to use a sign that is identical or similar to the mark in respect of goods or services that are the same as or similar to those for which the mark was registered.  Liability arises where there is a likelihood that the public will be confused because the sign is the same as or similar to the mark and the goods or services are the same as or similar to those for which the mark was registered.  Such likelihood should include the likelihood of association with the trade mark.  That is actionable under s,10 (2) of the Act.

The third is to use a sign that is the same as or similar to a mark that has a reputation in the UK.  It does not matter whether the goods for which it is used and the same or similar to those for which the mark is registered.  An action arises if the use to which the sign is put takes unfair advantage of or is detrimental to the distinctive character or repute of the mark without due cause.  That is actionable under s. 10 (3).

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.