‘Academic’ Intelligence: An Overview of Trademark, Part Two

As some of you might remember, last Monday’s entry opted to provide an overview of the basic characteristics of a trademark as well as outline the requirements for registering one under the Trade Marks Act 1994 (‘TMA’).

Today’s article will focus on the ways of challenging a trademark through s. 5 TMA as well as establishing a valid trademark infringement claim.

As noted last week, in order for a trademark to be registrable, the Intellectual Property Office (‘IPO’) must be satisfied that it is a sign, capable of being represented graphically and distinguishing goods or services, which falls outside the s.3 TMA categories.

If a third party wants to challenge the validity of the registration of a trade mark, it can do so under s.5 TMA. It must, however, be noted that s.5 can only be invoked by another party and is not look at by the IPO when someone applies to register a trademark.

Under s.5 TMA, a third party can argue that:

There is an identical mark which identifies identical goods (s.5 (1) TMA) and there is a likelihood of confusion ‘on the part of the public, which includes the likelihood of association with the earlier trade mark’.

Note that where two signs are identical and the goods that they represent are also identical, confusion will be presumed. Furthermore, it must be noted that there is no requirement of actual confusion; proving that there is a risk of confusion is sufficient.

There is an identical mark which identifies similar goods (s. 5 (2) (a)TMA ) and there is a likelihood of confusion (as per above)

Likelihood of confusion needs to be proved by the party replying on the section; there is no presumption of confusion under the above.

There is an similar mark which identifies similar goods (s. 5 (2) (b) TMA ) and there is a likelihood of confusion (as per above)

Likelihood of confusion needs to be proved by the party replying on the section; there is no presumption of confusion under the above.

There is a similar or identical mark which identifies similar goods and the use of the later mark ‘without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade (s.5 (3) TMA )

This can only be successfully invoked where the earlier mark is very famous and well- established, i.e. Coca- Cola, McDonalds, etc.

If a trademark falls within any of the above, its registration might be revoked by the IPO.

Another way of protecting a trademark is by bringing an infringement claim. As with copyright, a five- step process will best describe the stages of the process.

STEP ONE: Subsistence

All the claimant has to do is demonstrate that his trademark is on the register, that he is the owner and that it has been renewed (a trademark must be renewed every ten years (ss. 42-43 TMA).

STEP TWO: Infringing Act

The claimant needs to establish that the defendant has ‘used’ the trademark in ‘the course of its trade in the UK’ and ‘without the consent’ of the ‘trademark owner’ (s. 9 (1) TMA)

The infringing acts which are considered as ‘using’ the trademark are outlined in s. 10 (4) TMA and include packaging, offering to sell, import, etc.

STEP THREE: Comparison

The approach adopted in comparing both marks is the same as the one adopted by s. 5 TMA above, namely:

• S. 10 (1)TMA - see s. 5 (1) TMA above
• S. 10 (2) (a) TMA- see s. 5 (2) (a) TMA above.
• S. 10 (2) (b) TMA- see s. 5 (2) (b) TMA above.
• S. 10 (3) TMA- see s. 5 (3) TMA above.

STEP FOUR: Defences

The statutory defences are outlined in s. 11 TMA and include:

• S. 11 (2) (a) TMA - a bona fide use of the defendant’s own name and address
• S. 11 (2) (b) TMA - use of a trademark simply as an indication of characteristics of goods and services
• S. 11 (2) (c) TMA - use of a trademark where necessary to indicate the intended purpose of a product or service
• S. 11 (3) TMA - use of an earlier registered trademark in a particular locality

A defendant can also invoke a common law defence in that the claimant has not made his case or that the trademark should not have been registered in the first place.

STEP FIVE: Remedies

The remedies are outlined in ss. 14- 19 TMA and include an account of profits OR damages, delivery up or disposal of infringing goods, interim orders (injunctions, etc.) Further, under ss. 92- 94 TMA, it is a criminal offence to falsely present a trademark as registered.

In the light of the above, then, one will be justified in saying that protecting a trademark is a lot more straightforward and somewhat easier than protecting copyright.

Nevertheless, even though trademark is a registered intellectual property right, with view to ss. 1, 3 and 5 TMA, registering it can sometimes prove quite a herculean DIY task for an individual with no legal background.