Copyright is a right to prevent others from using or copying work without the consent of the copyright owner...
What is a trade mark?
A trade mark is sign or badge that identifies the goods or services from a particular business. Trade marks are not just logos, they can be words, sounds or even colours.
Once a trade mark is registered, the owner has the exclusive right to use the mark in the UK. This allows an owner to stop others from using their mark or a confusingly similar mark in relation to the goods and services that their mark was registered for.
Methods of Infringement
Infringement can only be when a mark is used the course of trade without the trade mark owner’s consent. Section 10 of the Trade Marks Act 1994 outlines the circumstances when a trade mark is infringed.
- Use of an identical sign for identical goods or services;
- Use of an identical or similar sign for similar goods or services if there is a likelihood of confusion;
- Use of a similar sign for identical goods or services, if there is a likelihood of confusion;
- Use of an identical or similar sign for goods or services, whether identical, similar or dissimilar, if the use is detrimental to or takes unfair advantage of the distinctive character or repute of the mark.
What is Confusion?
In cases other than an identical sign for identical goods or services, it is necessary to prove a likelihood of confusion. This is a confusion as to the origin of the goods/services. The question needs to be asked whether the relevant public would think that the goods/services are from the same company or an associated company.
When looking at the likelihood of confusion all relevant factors are considered. Assessing the visual, aural or conceptual similarity between the marks in question based on the overall impression, bearing in mind their distinctive and dominant components.
Reputation and Unfair Advantage
In circumstances when proving confusion is difficult, a trade mark owner can consider whether their mark has been infringed by taking unfair advantage of or the infringement is detrimental to the distinctive character or reputation of the registered mark. This is sometimes referred to as “riding on the coat-tails” of the trade mark in an attempt to exploit the repute of a well known brand.
What can an Owner do if they suspect Trade Mark Infringement?
If an owner suspects that their registered UK trade mark is being infringed, then they should document the potential infringing use either by taking photographs or taking screenshots (if online), recording the date of discovery, documenting any website URL or social media pages and investigating the infringing person or company.
Trade mark owners should consider taking specialist legal advice as to whether a trade mark has genuinely been infringed by a third party.
However, trade mark owners should take caution over sending cease and desist letters to potential infringers threatening proceedings owing to the provisions of the Intellectual Property (Unjustified Threats) Act 2017. As a threat to enforce trade mark rights can be actionable if such a threat lacked justification or was made in respect of an invalid right, allowing a recipient of an unjustified threat letter to claim damages.