Trade mark infringement
The defendant infringes a UK or EU registered trade mark by using:
- 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 trade mark has a reputation and the defendant’s use without due cause is detrimental to the trade mark
Infringing use must be in the course of trade. It includes use on goods, packaging, business papers, advertising, websites and other commercial communications.
The court will assess the likelihood of confusion globally, taking into account the similarity of the marks, the similarity of the goods or services and the perception of the average consumer.
Examples of infringing acts
- affixing a sign to goods or packaging
- offering goods for sale or putting them on the market under the sign
- supplying services under the sign
- importing or exporting goods bearing the sign
- using the sign in advertising, marketing or promotional material
Passing off
Where a trade mark is not registered, protection may arise through the law of passing off.
A claimant must establish goodwill attached to the goods or services, a misrepresentation by the defendant leading or likely to lead the public to believe that the goods or services are those of the claimant, and damage resulting from that misrepresentation.
Passing off claims often arise alongside trade mark infringement claims and can provide valuable additional protection where registration is absent or incomplete.
Remedies
Civil remedies for trade mark infringement include:
- injunctions to prevent further infringement
- damages or an account of profits
- delivery up or destruction of infringing goods
In appropriate cases, criminal sanctions may also apply, particularly in cases involving counterfeit goods.
Trade mark disputes
Trade mark disputes are generally heard in the High Court or the Intellectual Property Enterprise Court (IPEC), depending on complexity and value.
We advise clients on litigation strategy, including pre-action correspondence, interim relief, settlement negotiations and trial proceedings.
Trade mark strategy and enforcement
Effective enforcement of trade mark rights requires a coordinated strategy, including monitoring, enforcement action and ongoing brand protection.
We advise on infringement claims, passing off proceedings and broader intellectual property disputes, including multi-jurisdictional enforcement.
Legal 500 2026
Recommended for its ‘fierce dedication and tireless work ethic’, the specialist team at Humphreys & Co. fields particularly strong expertise in IP litigation and trade mark prosecution.
The practice is helmed by longstanding IP expert Robert Humphreys, working alongside the ‘very knowledgeable’ Tristan Morse and Ruth Annand.
Chambers 2026
Their expertise in intellectual property, combined with their extensive network, enables them to manage our cases with strength and precision.
What our team is known for
Depth of knowledge and experience in prosecution, licensing and litigation concerning brands, designs and copyrighted material.
We advise fashion, electronics, drinks and financial services businesses large and small and are recommended for registry procedures and disputes involving overseas jurisdictions.
Speak to a trade mark infringement solicitor
If you require advice on trade mark infringement or brand protection disputes, please contact our commercial team.
We will provide clear, practical advice on enforcing your rights and protecting your brand.
