Trademark Infringement

It is the responsibility of a trademark owner to ensure their trademark rights are communicated, monitored and protected, and if necessary, defended through legal action.

Under the Trademarks Act 1999 a person infringes a registered trademark if the person “uses as a trademark” a sign which is:-

“substantially identical” with or “deceptively similar” to the registered trademark on goods or services covered by the trademark registration;

substantially identical with or deceptively similar to the registered trademark on goods or services of the same description as, or closely related to, the goods or services of the registration, where such use is likely to deceive or to cause confusion; and

substantially identical with or deceptively similar to a  well known trademark on unrelated goods or services, if it can be demonstrated that such use would be likely to suggest a connection between those unrelated goods or services and the proprietor of the well known mark, such that the interests of the registered proprietor are likely to be adversely affected.

Uses As A Trademark

It is necessary that the mark has been used to distinguish goods or services dealt with in the course of trade by a person from those dealt with or provided by another person.  The use must be actual use as a trademark indicating origin of those goods or services.  Use of the trademark as a mere description will not constitute infringement.

Substantially Identical
Includes marks which are the same as, or marks which closely resemble the registered trademark in it is essential features based on a side by side comparison.

Deceptively Similar
Includes marks which so nearly resemble the registered trademark (including visual or aural similarity or similarity in meaning) that use of the mark is likely to deceive or cause confusion, for example “chandeal” was held to be deceptively similar to “chantelle”.

Well Known
A trademark known to a significant number of persons in the relevant sector of the public.
Note: a registered trademark is considered to have been registered as from the date of filing the application for registration.

Good Faith
A person will not infringe a registered trademark where they use in good faith their , or a predecessor in business’, name or location of business, or a sign which indicates the kind, quality, quantity, intended purpose, value or some other characteristic of the goods or services.

Similarly, use of the mark in comparative advertising or to indicate the purpose of the goods or services, for example as being accessories or spare parts for the trademarked goods or services, does not constitute infringement.

Use of a person’s own registered trademark is a defence to infringement of another registered mark. Also, where the person uses a mark they themselves would be entitled to register, or at the consent of the registered trademark owner, there is no infringement. Use of a disclaimed part of a registered trademark, or use of a trademark in a manner which does not contravene conditions or limitations to which a registration is made subject, are not infringing uses.

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