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solicitors|Trademark infringement solicitors, infringement proceedings specialists, our solicitors act in the pursuit and defence of infringement of registered trademark & passing off claims in the London & UK regional courts.
infringement UK: trademark disputes, passing off: brand protection:
trade mark infringement claims: London courts: intellectual property:|
Solicitors here are also specialists in registering trademarks in the UK, Europe, the Middle East, the US, Asia & internationally, in trademark licensing & all forms of UK intellectual property litigation.
"Really appreciate all the work that went into this from your side. We ended up getting this turned around faster than I ever could have predicted." Oct 2012
It is difficult to go anywhere or do anything without encountering brands (trading names, logos and get-up). Brands are most companies' most valuable assets because they:
- Indicate the source or origin of products
- Guarantee quality
- Advertise products
Trademark laws attach primary importance to the origin function of brands although increasingly recognition is given to their guarantee and advertising roles.
If you use an identical or similar trademark for identical or similar goods and services to a registered trademark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public.
United Kingdom (UK) law offers two main forms of brand protection:
Registration is not compulsory but has the following advantages:
- registered trade marks; and
- passing off.
Registered trademark infringement and passing off are cumulative: they can be argued together on the same set of facts.
- Registration is prima facie proof of the claimant's entitlement to the mark.
- Registration may be obtained before using the mark safeguarding any pre-launch investment.
- Registration generally allows an action for infringement to be brought without proof of damage.
- Registration gives notice to third parties of the proprietor's interest in the mark.
- The common law action of passing off depends not on registration but use of a mark. It has the following drawbacks:
- Passing off calls for proof of the claimant's goodwill in the mark.
- Passing off cannot protect an unused mark.
- Passing off depends on damage or likely damage to goodwill.
- Passing off requires a heavy evidential burden to be discharged in every case.
In some jurisdictions, like the Community Trademark, protection is non-existent unless the mark is registered.
Infringement of a UK registered trademark|
The infringement criteria in s. 10 TMA mirror the relative grounds for refusal of registration of a sign as a trademark. The defendant infringes a UK registered trademark by using:
The defendant's use must be in the course of trade and may be oral, for example, over the radio. Infringing acts include:
- an identical sign for identical products;
- an identical sign for similar products or a similar sign for identical or similar products where there is a likelihood of confusion including association;
- an identical or similar sign even for dissimilar products where the trademark has reputation and the defendant's use without due cause is detrimental to the trademark.
There is uncertainty over whether the defendant must use the sign as a trademark, that is, to indicate the origin of products (R v. Johnstone (2003)). The ECJ ruled in (2002) and confirmed in Arsenal Bellure (2009) that the relevant issue is likely damage to the trademark including to its functions of communication, investment and advertising. While purely descriptive use would not have this effect (Hölterhoff (2002)), use of the names and logos of football clubs on unauthorised merchandise by street traders would (Arsenal). Likewise, mere use of a company name constituting another's trade mark is permissible (Céline (2007)) whereas use of established perfume brands in smell-alike advertising is not (Bellure (2009)). The ECJ is shortly expected to rule on whether the reservation and use of adwords constitutes trade mark infringement (Google et al). Hopefully, those rulings will bring further clarification.
- Affixing the sign to goods or packaging
- Offering goods for sale or supplying services under the sign
- Importing or exporting goods under the sign
- Using the sign on promotional material
Civil remedies for trademark infringement include injunctions, damages or account of profits, and delivery up and disposal of offending products. Criminal penalties are also available.
An action for infringement can be brought by the proprietor of the mark and in certain circumstances exclusive and non-exclusive licensees. Groundless threats of proceedings for infringement of a trademark are actionable by the defendant (s. 21 TMA).
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Defences to UK registered trademark infringement
The fair use defences in s. 11 TMA cover:
- Use of another registered trademark.
- Use of one's own name or address. The use of a company name is included.
- Use to indicate the suitability of spare parts or other characteristics of products.
- The latter two defences are qualified by the requirement that the defendant's conduct must be in accordance with honest commercial practices.
Exhaustion of rights within the EC forms an important defence for parallel importers. The defence does not apply to goods put on the market in countries outside the EC by the proprietor or someone with the proprietor's consent (Zino Davidoff (2001)).
|Unregistered trademark protection - the law of passing off
The classic statement of passing off is that "nobody has any right to represent his goods as the goods of somebody else" – Lord Halsbury in Reddaway v. Banham (1896). Passing off also extends a remedy where:
- The defendant passes off the claimant's products as being of superior quality - Spalding v. Gamage (1915)
- The defendant passes off products as meeting a recognised trade description like "Advocaat" – Erven Warnink v. Townend (1979)
- The defendant passes off the claimant's products as the defendant's own, "reverse passing off " - Bristol Conservatories (1989)
- The defendant passes off products as approved or endorsed – Irvine v. Talksport(2003)
In order to succeed in an action for passing off the claimant needs to establish that:
(a) the claimant's products have acquired a goodwill or reputation in the market and are known by some distinguishing feature. That feature can range from a lemon shape container - Jif Lemon (1990) to a telephone number - Law Society v. Griffiths (1995);
(b) in using a similar feature the defendant makes a misrepresentation leading or likely to lead the consumer to believe that the defendant's products belong to the claimant or are in some way connected with the claimant. The defendant need not act intentionally;
(c) the claimant suffers or is likely to suffer damage as a result.
Remedies for passing off include interim and final injunctions and damages or an account of profits.
|“Lastly, may I just thank you and your team for the very professional and thorough way that you have dealt with this issue on my behalf. It has been a huge relief to have your support.” |
Intellectual property at a glance
- Patents, trademarks, copyright, designs and trade secrets in their national, EU and international contexts.
- Trademarks principally indicate the origin of goods or services. They can be protected in the UK through either passing off or registration. The choices for registration are a UK or a Community trade mark or international registration.
- A registered trademark may afford protection against use of the same or a similar sign for the same, similar or dissimilar goods or services.
- Patents confer monopoly rights in inventions. The invention must be new, inventive, capable of industrial application and not excluded.
- Patents must be licensed in accordance with the Block Exemption on Technology Transfer Agreements. They may be subject to compulsory licences and Crown use.
- Copyright subsists in works not ideas. Related rights include moral rights and rights in performances.
- Copyright is infringed by taking a substantial part of the claimant's work. Additional damages are available for flagrant infringements.
- Database right subsists in electronic and paper databases if a substantial investment is made in obtaining the contents.
- Designs are protected in UK law by registered and unregistered design rights. Community designs co-exist with UK designs laws.
- Trade secrets may be protected by a civil law action for breach of confidence. The information must be confidential, imparted in circumstances importing a duty of confidence and the defendant must make unauthorised use of the information.
- Intellectual property rights are generally litigated in the High Court. A general pre-action protocol sets out the steps that parties should follow when considering litigation.
- Expert evidence can be the key to success in intellectual property cases
|Are your brands protected against infringement?|
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Solicitors here can supply the energy and depth in intellectual property law which companies, businesspeople and correspondent firms need in a competitive world marketplace to manage their intellectual property rights successfully, including in relation to:
- joint ventures
- know-how & show-how
- licensing & franchising
- litigation, arbitration, mediation
- media & publishing
- patents (licensing, transfer & litigation)
- passing off
- technology transfer
- unfair competition
- business & company acquisitions & sales
- computer software
- confidential information
- database rights
- defamation & malicious falsehood
- designs (registered & unregistered)
- employee obligations
- EU treaty regulations
- free trade
- information technology
- music business
We take instructions from UK & international clients. Our independent lawyers are available by email, telephone & fax. With central Bristol offices we are just 90 minutes from London by road or rail and 15 minutes from Bristol International Airport. We can travel to meetings if required.
We are an independent professional law firm here, not a legal factory turning out mass-produced products. In our experience, determined case-handling is more likely to produce effective results.
Solicitors at Humphreys & Co. look to input not only
careful legal work and precision but also the determination
to keep matters moving. They aim to work in clients' real
interests with energy and pragmatism.
Solicitors at Humphreys & Co. always try to open up the
legal process by giving advice and explaining options to
clients in a concise and straightforward way, identifying
clear courses of action whatever the technical or legal
complexities of the subject.