Technology &
Internet Law
Trade Mark Infringement & The Defences
to Infringement
Use of a Trade Mark and Infringement
The defendant's use of the trade mark must fall within the definition
of infringement as outlined under section 10 of the TMA. A defendant
can be said to have infringed a trade mark in the following circumstances:
- If he uses, in the course of trade, a sign which is identical with
the trade mark in relation to goods or services which are identical with
those for which it is registered¨.
- If he uses in the course of trade a sign where because it is identical with
or similar to the trade mark and is used in relation to goods
or services similar to or identical with those for which
the trade mark is registered, 'there exists a likelihood of confusion on
the part of the public, which includes the likelihood of association with
the trade mark.'
- If he uses in the course of trade a sign which is identical with or similar
to the trade mark, and is used in relation to goods or services
which are not similar ' where the trade mark has a
reputation in the [UK] and the use of the sign without due cause, takes
unfair advantage of, or is detrimental to, the distinctive character of
the repute of the trade mark.'
Looking at the third situation, protection is afforded to well-known marks
which have a reputation in the UK, even if they are not an already registered
trade marks. This means that the existence of such unregistered trade
marks can now be employed to oppose the registration of a later similar
mark so long as it can be shown that - given the unregistered trade mark
has a reputation in the UK - to allow registration would take 'unfair advantage
of, or is detrimental to, the distinctive character of the repute of the
trade mark.' Moreover, section 5(4) specifically provides that a trade mark
cannot be registered if its use in the UK is liable to be prevented by the
law of passing off protecting an unregistered mark used in the course of
trade.
Groundless Threats
While a registered proprietor of a registered trade mark is entitled to
take all actions available to him under the TMA for infringement, he is not
entitled to make 'groundless threats of infringement proceedings' (section
21). In other words, you must be able to 'put up or shut up'. So unless there
is ample evidence of infringement - and you must be able to prove it - threatening
with infringement action is itself actionable (i.e. you can end up being
sued and paying damages to the other side). This is called a "threats
action".
The Prince Case
In Prince PLC v Prince Sportswear Group Inc (1997), the plaintiffs
were an UK ITSP which operated for two years a website using the domain name
'www.prince.com'. The defendants were a New Jersey sportswear company. The
defendants accused the plaintiffs of infringing their federal trade mark
'PRINCE' and threatened legal action unless the domain name was immediately
transferred to them and no future use of the word 'Prince' was made. Prince
PLC took out a "threats action" against the defendants in the English
High Court under section 21. Neuberger J found for Prince PLC and declared
that businesses should be wary about alleging infringement because if a business
makes use of unjustified threats then it only has itself to blame if those
proceedings initiated by the business being threatened result in relief being
granted against them.
However, there is nothing wrong with informing someone that your trade mark
has been registered.
Defences to Claims of Infringement
There are a number defences available to competitors to lawfully use the
registered trade marks of rivals in certain circumstances. The most significant
one is the allowance given to fair use . Under section 10(6) it
is lawful for a competitor to use the trade mark of a registered proprietor
'for the purpose of identifying goods or services as those of the proprietor'
or his licensee, provided it is 'in accordance with honest practices in industrial
and commercial matters'. This provision is designed to allow competitors
to use the trade mark of another for the purposes of comparative advertisement.
However, the use of such trade marks must be fair .
The question of when a use of another's trade mark is fair has been visited
by the courts a number of times since the passing of the TMA in 1994. An
important case in this context is Barclays Bank v RBS Advanta [1996]
RPC 307 where Laddie J concluded that a plaintiff could not succeed simply
by showing that the defendant was taking 'unfair advantage' of the trade
mark. He needed to show that there was 'material dishonesty' before he could
succeed in establishing that there had been 'unfair' use. Subsequent cases
have given rise to the objective standard of the "reasonable reader" to
ascertain whether a use is 'material dishonesty' and, therefore, unfair.
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NEED TO KNOW MORE?
For further information on trade marks and infringement, contact Maitland
Kalton or Julian Danobeitia or call us on +44 (0)20 7278 1817
Kaltons Solicitors, Suite 302, Spitfire Studios, 63-71 Collier Street, London, N1 9BE. Telephone +44 (0)20 7278 1817; Fax: +44 (0)207 278 1835.
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