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What are trademarks?
A trademark is a symbol, word or words used by a trader to distinguish its products or services from those of others. A trademark protects branding for businesses including product names, logos, acronyms, slogans, trading styles and even colours. Trademarks are a very valuable form of IP because they become associated with quality and consumer expectations in a product or service. It is therefore vital for businesses to identify, register and protect their trademark(s).
Trademark owners can apply for a Community trademark (CTM) or a UK trademark. A UK registered trademark is only enforceable in the UK, whereas a CTM is enforceable throughout the EU. Each type of registration lasts ten years and is renewable for further ten-year periods. It is also possible to register trademarks throughout the world, although it is advisable to initially register them in the countries where the goods or services are to be supplied.
To be registrable, a trademark must be distinctive, capable of being represented graphically, capable of distinguishing goods or services and not be excluded by statute.
What is 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.
The TMA and EUTM Regulations set out the various circumstances under which someone will be liable for trademark infringement. These are when the infringer:
- Uses an identical sign on identical goods;
- Uses an identical sign on similar goods and there is a likelihood of confusion;
- Uses a similar sign on identical or similar goods and there is a likelihood of confusion;
- Uses an identical or similar sign on any goods (identical, similar or dissimilar) and the registered mark has a reputation and its use by the infringer is without cause and takes unfair advantage or is detrimental to the distinctive character or reputation of the registered trademark.
The infringer must have also used the infringing mark in the course of trade.
The relationship between trademarks and passing off claims
You can still protect your mark even if it is not a registered trademark. 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”. In order to succeed in a claim for passing off, a claimant must prove:
- Its 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 on offer are those belonging 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, the defendant is likely to be liable unless they successfully plead one of the statutory defences.
Commonly, if there is a registered trademark, claims are brought against the infringer for both trademark infringement and passing off. This is particularly so if there may be a challenge to the validity of the registered trademark.
How to bring a breach of trademark claim
Breach of trademark claims can be extremely technical and complex meaning they are often dealt with by specialist courts in both England and Wales. For this reason, we always recommend that claimants in trademark infringement proceedings instruct specialist intellectual property solicitors. It is also quite common for a specialist intellectual property barrister to be instructed as well in order to represent claimants in court.
If infringement proceedings are contemplated, a claimant should first write a letter of claim to the potential defendant(s). This letter of claim should put the defendant(s) on notice of a claim and give the defendant(s) a reasonable amount of time (normally between 14 and 28 days but could be up to 3 months in complex cases) to respond to the claims made against them. The letter of claim must sufficiently identify the relevant trademark(s) to enable the defendant(s) to evaluate them and formulate a view on infringement. The best way to do this is to provide copies of the relevant trademark(s). All parties involved in trademark infringement claims are expected to act reasonably in exchanging information and evidence prior to court proceedings being issued.
If the claim cannot be resolved then it is likely court proceedings will need to be issued. Claims for trademark infringement are brought in the High Court, specifically in the Intellectual Property List of the Business and Property Courts. Lower value claims are brought in the specialist Intellectual Property Enterprise Court (IPEC) where capped costs operate. IPEC also has its own small claims track which deals with trademark infringement cases which are worth less than £10,000.
Only the trademark owner or someone with an exclusive licence to use the trademark can bring infringement proceedings. If the trademark is jointly owned, any of the joint owners can issue a claim.
To issue court proceedings, specific court documents will need to be drafted. These are a claim form and particulars of claim. There will also be a court fee payable to issue court proceedings which depends on the value of the claim and the relief sought. We always recommend that these documents are drafted by a barrister with assistance from a solicitor in order to ensure they comply with the court rules. These documents will identify the parties, state the cause(s) of action and the remedies sought.
The defendant(s) will then be given an opportunity to file and serve a defence to the claim (normally within 28 days of the court proceedings being issued but extensions of time can be agreed).
After that, the court is likely to order the parties to take the following steps to prepare the case for trial: disclosure of documents, witness statements and experts reports. It is our experience however that most trademark infringement cases settle without the need for there to be a trial.
Remedies available for successful trademark infringement and passing off claims
There are several remedies available for claimants when a claim for trademark infringement and/or passing off is successful. These are as follows:
- An interim injunction can be obtained before a full trial which prevents the defendant from continuing to “pass off” their goods or services;
- A final injunction preventing the defendant from using the 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; and
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 are regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally. If you need advice on trademark or other intellectual property infringements, please do not hesitate to contact a member of the team today.