A Defendant’s Guide to Trademark Infringement

The law relating to UK registered trademarks is contained primarily in the Trade Marks Act 1994 (TMA), which implemented the 2008 Trade Marks Directive and its successor, the 2015 Trade Marks Directive. The law relating to CTMs is contained in the EUTM Regulations 2017.

Broadly, trademark infringement occurs when someone else uses a sign that is identical to a registered trademark in the course of a trade. The TMA goes further to state that even if a sign is similar to that of a registered trademark, this could be classed as an infringement if it creates confusion in the minds of the public. Therefore, a Defendant will not escape liability for trademark infringement by simply altering the wording or logo of a registered trademark.

The infringer must have also used the infringing mark in the course of trade. 

Trademarks can still be enforced even if they have not been registered. This is through the common law action of passing off. The underlying principle behind this action is that “a man is not to sell his goods under the pretence that they are the goods of another man”. Broadly speaking, passing off occurs when:

• A claimant’s goods or services have goodwill attached to them, i.e. they have a particular image and reputation attached to them, which enable the public to easily recognise those particular goods or services;
• There has been a misrepresentation to the public (which does not have to be intentional) which would lead, or is likely to lead, the public into believing that the goods or services offered by the defendant belong to the claimant; and
• There has been damage caused to the goodwill or reputation of the claimant.

The benchmark for establishing passing off is normally higher than for trademark infringement as the claimant must prove goodwill, misrepresentation and damage. In an action for trademark infringement, if one of the prohibited acts set out above has been committed, a defendant will likely be liable unless they successfully plead one of the statutory defences.

Commonly, if there is a registered trademark, a claim will likely be brought for both trademark infringement and passing off. This is particularly so if there are grounds for a defendant to challenge the validity of the registered trademark.

Prevention is always better than the cure, as defending trademark infringement proceedings can be costly in terms of legal fees, potential damages and in lost management time.

If you are creating a sign or a brand, make sure that it is not already registered. A simple search on Google or on the Intellectual Property Office (IPO) website may reveal that a sign is already registered. For a more sophisticated search, you should seek advice from a Trademark Attorney. We have excellent relationships with a number of Trademark Attorneys who we can refer you to if you need their advice.  

Where possible, taking an assignment or licence of third-party marks is an obvious way of avoiding trademark infringement. However, care should always be taken to ensure you do not go beyond the terms of the licence agreement. We would always suggest that a specialist intellectual property solicitor drafts a licence agreement. 

Take steps to register your mark. The sooner, the better, as this will protect your brand from other third parties and may also be a defence against any future trademark infringement claim (see above).

Trademark holders often take swift action against infringers, especially where they seek immediate injunctive relief, which can be lost if there is a delay. A defendant will normally receive a strongly worded cease and desist letter, which will likely insist on various undertakings being agreed upon in order to cure the infringement and avoid court proceedings being issued. If you do receive a cease and desist letter, do not ignore it. Specialist legal advice should be sought. There may be defences (see above) available which can head off a claim before it escalates.

A broad range of remedies are available to a claimant if successful in proving trademark infringement. These include:

• An interim injunction can be obtained before a full trial which prevents the defendant(s) from continuing the trademark infringement or from continuing to “pass off” its goods or services.
• A final injunction preventing a defendant from using the relevant trademark without permission in the future.
• Delivery up and/or disposal of the infringing goods.
• Damages for loss of sales or damage to goodwill or an account of profits which means the defendant pays to the claimant a proportion of the profits it made as a result of the infringement.

Our specialist Intellectual Property Disputes team routinely advises on a broad range of disputes relating to trademarks along with other intellectual property disputes relating to copyright, patents, confidential information and data protection. The team is also highly skilled at advising on design rights and reputation management issues and is regularly instructed by clients from the UK and internationally in the arts, media, textile and clothing sectors.