Guide to the Law Relating to Trade Marks (part 2 of 2)

Not all trade marks are registered. Until a trade mark is registered, it exists as an unregistered trade mark. Rights can subsist in that mark, which can be enforced through an action for ‘Passing Off’.

As the name suggests, an action for Passing Off exists where Party B seeks to pass themselves/their goods/services off as those of Party A, or give the impression that they are connected to Party A in some way. This deliberate misrepresentation will invariably cause damage to Party A’s reputation.

A claim for Passing Off requires evidence of goodwill and reputation in a mark, whereas the infringement of a registered trade mark is judged generally upon a comparison (similarity) of the registered mark to that of the alleged infringer (mentioned later in this note). Therefore, a Passing Off action can be more expensive to bring than a registered trade mark claim.

The protection afforded by unregistered trade marks however can be wider than registered marks; protection can extend to the general appearance and ‘get-up’ of a website (its style, colour scheme etc.). Therefore there is often a strategic decision to be made as to how a claim should be brought against an infringing party.

A registered trade mark acts as a unique stamp of identity and authenticity. Under the Trade Marks Act 1994 (the Act), a trade mark is infringed where there is use in the course of trade by a third party of:

• A sign identical with the registered trade mark, for identical goods/services (against which the mark is registered);
• A sign which is identical or similar to the registered mark which is used for similar or identical goods/services and there is a likelihood of confusion; and/or
• An identical or similar sign for any goods/services and the registered mark has a reputation, and the use of the infringing mark takes unfair advantage of or is detrimental to the reputation of the registered mark.

The above can also extend to the use of a domain name, which may also infringe a registered trade mark.

The tests for infringement can be complex and the case law on what will constitute an infringement is extensive: it is all very fact specific.

Before litigation is started, initial communications with infringers need to be handled carefully. A trade mark holder can risk falling foul of the ‘Groundless Threats’ provisions of the Act if they are not careful. It is an offence under the Act to make a groundless threat of infringement proceedings, and so if a claim is misjudged against an apparent infringer then the unintended consequence can be that the claimant becomes the defendant quite swiftly.

If it appears that a registered trade mark is being infringed, it is recommended that legal advice is therefore sought at an early stage.

Typical remedies for infringement include:

• Injunctions;
• Damages or an account of profits; and
• Orders for delivery-up or destruction of infringing goods.

The infringement of a trade mark can constitute a criminal as well as a civil law offence.

It is also possible to notify and request the assistance of the Police and HM Revenue and Customs in certain circumstances to stop the importation and sale of counterfeit goods. 

Whether or not a business considers there is a high risk of its rights being infringed, it is recommended that a plan is in place in the event of discovery of infringement.

For example, collecting initial proof of infringement before an infringer is tipped-off can be critical because once notified: websites can be changed, infringing goods hidden and actions disguised.

In the case of counterfeit goods, test purchases using specialist enquiry agents can help to build up a robust evidence bank before first contact is made. More generally, screenshots of an infringing website and social media pages for example can also be useful to protect vital evidence.

Having an awareness of the legal remedies and protections afforded to the holders of registered trade marks can be very valuable.

With regard to all of the above, each business is different, with different risk profiles, and so it’s recommended that legal advice is sought at an early stage.

This article is not intended as specific legal advice.  Each case is judged on its own merits, against its own particular set of facts and will typically involve an objective assessment by the court of the precise words used.

The law relating to trade marks is complex and constantly developing.  The purpose of this note is to assist in providing an overall understanding of the legal context within which such rights operate.

Accordingly, in the event of such a dispute it is recommended that formal legal advice from a lawyer with expertise in this field is sought at the earliest opportunity.