#3243 - Ip Infringement - Commercial and IP

Intellectual Property Rights

IP Infringement

Registered Trade Mark Infringement

What constitutes infringement:

S.10 TMA 1994 [mirror of S.5 TMA]

S.10(1)	TM is identical; in relation to identical goods / services.
S.10(2)(a)	Mark is identical; goods are similar to those for which the TM is registered.
S.10(2)(b)	Mark is similar; goods and services are identical or similar to those for which the TM is registered.
S.10(3)	TM is identical or similar; and Is used in relation to goods which are NOT similar; but Registered TM has reputation in the UK; and The use of the sign takes unfair advantage of OR is detrimental to the distinctive character / reputation of the trademark.

No need to show an intention / awareness of copying! A registered TM is an absolute monopoly right.

What constitutes USING the sign [in order to prove infringement]

S.10(4)

person affixes the sign to the goods / packaging
Person offers or exposes the goods for sale; puts them on the market; stocks them for those purposes under the sign
Imports / exports the goods under the sign;
Uses the sign on business papers or in advertising

S.10(6)

It is NOT “using” the Trademark for infringement purposes where party simply uses the TM to identify the proprietor / licensee.

e.g. Comparative pricing advertising

Defences

S.11: Limit on the effect of the RTM

i.e. the protection offered by registration does not cover the supposed infringers act.
S.11(2)(a) Use of own name and address
S.11(2)(b) Use to describe kind, quality, quantity of goods
S.11(2)(c) Use to explain intended purpose [e.g. we have spare parts for BMW]

These exceptions apply so long as the mark is used in accordance with honest practices!

S.12: Exhaustion of rights

The TM is unduly restrictive – competition law issues!
S.12 sets limits on the monopoly right – the TM right must NOT indirectly restrict trade.

Groundless Threats Action – S.21 TMA

Actionable tort
Any communication, other than mere notification of the existence of a registered TM, can form the basis of the threat action.
Claimant brings an action – on the basis that the threats were unfounded and lacked justification.
Rational: TM owner should be able to put primary infringers on notice that he intends to sue, but that retailers and other traders further down the distribution chain should be protected from such threats.
Advise client when drafting letter before claim / letter of claim:

Send letter to principal infringer [but complying with the exceptions of S.21]
Send “Standard Informing Letter” to other parties – simply stating that there is infringement and putting them on notice.

Unregistered Trade Mark Infringement - Passing Off [Tort Action]

Advise to client: always combine an action of ‘Passing-off” [where TM is registered] because the court may not agree that the mark is an accepted trademark capable of registration.
Passing off action – argue that the overall “get up” of the defendant appears designed to take advantage of the goodwill the claimant [our client] has created.

The elements of passing off: [Rickitt & Coleman v Borden 1990 - TEST]

APPLY:

C and D both in Trade / business
Goodwill / reputation attached to goods / services
Misrepresentation by D to the public leading to [or likely to lead to] belief on the part of the public that goods / services offered by D are the goods / services offered by the Claimant [CONFUSION amongst consumers]
Claimant suffers / is likely to suffer damage by reason of erroneous belief that the source of D’s goods / services is the same as the source of those offered by the claimant.

Damage could be: Loss of profits; undercutting the exclusivity of C’s reputation; Depriving C of the opportunity to expand the business; falsely claiming that his product is endorsed by C.

Remedies – Interim Injunction

Available if quick action is required to prevent a breach of IPR.
Claimant will need to take action – gather certain information to support the application.

Test for Interim Injunction:

American Cyanamid guidelines:

serious question to be tried [evidence of substance and reality]
Balance of convenience – what course of action will cause least harm to parties.

With / Without notice

What information should claimant gather:

Try to show urgency / strong case [speed!!!!!]

Support evidence with Witness Statements – covering the following points:

Information about the TM: when registered; registration number; classes of registration; certificate
Validity of TM – use of the trademark
Ownership of the TM
Annual marketing and advertising spend by claimant since registration of TM[evidence of strengthened brand awareness]
Claimant’s turnover for this period
Examples of use [samples of packaging / marketing material / press cuttings / articles / trade comments]
Market research survey – showing evidence of consumer awareness
Any further information by key people – e.g. when did they realise there was...

#3243 - Ip Infringement - Commercial and IP

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