What is Trademark Infringement? - Fleximize

What is Trademark Infringement?

Trademark infringement and how to tackle it.

By Emma Meakin

Do you think someone is misusing your trademark? Have you seen someone with a similar or identical mark? Then You may need take action.

Your trademark means your exclusive use

The Trade Marks Act 1994 awards an exclusive right to the owner of a registered trademark to use the mark. Misuse of the trademark under the act allows the owner to bring a claim against the misusing party. However, the misuse of your trademark may not always be actionable. If you've granted a licence to a third party to use it, then they’ll be using your trademark honestly and fairly, and you won’t be able to bring a claim.

Has there been misuse?

To bring an action for misuse you must be able to show the below:

1. The trademark was registered

2. The trademark was used during the course of trade (so someone painting your logo on their wall at home, for instance, isn’t misuse)

3. The trademark must have been used as a trademark, or badge of trade origin as distinct from serving some other purpose. If a third party is using your registered trademark during the course of trade to distinguish themselves from the rest of the industry, this is misuse.

Methods of Infringement under the Trade Marks Act 1994

Under the Trade Marks Act 1994 there are three types of infringement. These are located in section 10 of the Act and focus on identical or similar signs, goods or services.

First offence

The first offence is the use of an identical sign for identical goods or services (Section 10(1)). For example if your company was named 'Riverside Business Information' and you registered this as your trademark, but another company established itself under the same name, in the same area of trade, you’d be able to claim.

When reviewing whether or not section 10(1) applies, the court will look at the whole of the alleged infringing mark or sign. It won’t be applied if the company only used the word ‘Riverside’. Having said that, there may be an infringement under another section.

Second offence

The second offence is the use of an identical or similar sign for similar goods and services, potentially creating confusion among customers about the origin or the goods or services. Confusion can arise from the use of the mark, or the association that the company that is misusing your trademark is linked to you.

Third offence

The third and final offence is the 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 disadvantage of the distinctive character of your trademark.

In order to be successful in a case where you’re attempting to demonstrate an advantage gained from the use of your trademark by another, you must show that your mark is highly distractive and the use of it would mean that the public would be reminded of the good reputation the trademark represents. Therefore, its misuse creates an unfair advantage.

This area of law is tricky and the EU Courts have become involved in a few cases. So it's vital that if you have suspicions, that there may be a Section 10(3) issue, which a specialist can help you with. Go to the Law Society 'Find a Solicitor' page.

What remedies are available for misuse?

If someone is misusing your trademark, you will no doubt wish to stop them and receive some form of compensation from them.

The usual available remedies are compensation for damages, an injunction to stop the use of the trademark, or a delivery up of accounts. The Trademarks Act 1994 includes additional options, which include:

But there is also a remedy available to the third party you wish to bring action against. Under the Trade Mark Acts 1994, the third party in receipt of a threat of proceedings can apply to the court to cease these threats if they’re groundless. If successful, this application can see the court award to the third party an injunction to stop your actions, damages to compensate them as a result of your action, or a declaration that your actions were simply threats.