infringement of a registered trademark

4.3 Another infringement of a registered trademark may arise from the unlawful use in the course of trade where the trade mark has reputation in the UK.[1] This provision in the 1994 Act is aimed at safeguarding the established status of a particular mark if it can be proved that the unsanctioned use of the mark has caused detriment to the marks character.[2] As shown in the case Skyscape.[3] The burden lies with the claimant to show that use of their marks would not cause detriment to the defendants’ registered mark and the reputation it carries with it. When ascertaining if there has been economic detriment, it was deemed appropriate to examine the economic behaviour of the average customer. It was found that due to the similarity in the marks the customer pool would be diluted and this would cause economic loss. Furthermore, it was found that with a similar sounding trade mark the reputation of the mark registered first would suffer, and therefore this would constitute an infringement of that mark.[4] The protection of a brand reputation is a significant part of upholding a trade mark and the dilution and blurring of the mark is also incorporated under the 1994 Act.

4.4 Section 10 (4) of the 1994 Act states that infringement of a trade mark will occur if the mark is attached to goods, goods are exposed under the sign, goods are imported (or exported) under the sign or if the mark is used in advertising without authorisation. The case R. v Johnstone[5] illustrates the use of registered trademarks, in this case performers whose names had been registered as trademarks, on “bootleg” copies of music albums. The marks had been affixed to the “bootleg” compact discs, however it was determined that here the marks were not used as indicators of trade origin[6] and instead was instructional only to identify the subject matter of each CD. Therefore, the appeal was dismissed, as it was determined that for trade mark infringement to occur under s.10 (4) of the 1994 Act a trade mark has to be used as an indicator of origin.

4.5 The 1994 Act provides that anyone who applies a registered trade mark to material intended for labelling or packaging or a business paper or for advertising shall be found to have infringed that trade mark if used without authorisation.[7] An example of this can be seen in a case preceding the 1994 Act, namely the CHEETAH[8] case. Here, a known trade mark was being used on invoices which was deemed to be an infringement of that trade mark and equivalent to having used the trade mark on the goods themselves.

 

4.6 The last part of section 10[9] concerns the use of trademarks in “honest practices in industrial and commercial matters.” It is evident from this that a registered trade mark cannot therefore be used to make false claims. The Cable[10] case illustrates how the use of a registered trademark of one company by another company can be deemed to not conform to “honest practices.” Here, BT used C&Ws’ mark in a brochure where the two companies’ prices were compared. It was stated, that “no one who knowingly puts forward a false claim can be acting in accordance with honest practices.”[11] This was determined to not infringe the trade mark however, due to the fact that it was determined that a reasonable likelihood of a significant amount of people could not be misled to believe the claims put forward to a significant degree.

4.7 I am therefore of the opinion that there are various heads of claim to the infringement of a trade mark, namely where there has been unauthorised use of a registered trademark in the course of business, the right to prevent third parties from using a similar mark to that which has been registered, the attachment of the trademark to materials intended for packaging and hurting the reputation of a trademark.

[1] Trade Marks Act 1994 c. 26, s. 10 (3)

[2] Dr Jasem Tarawneh “A new classification for trade mark functions” I.P.Q. [2016] 4, 352-370

[3] Skyscape Cloud Services Ltd v Sky Plc. [2016] EWHC 1340 (IPEC)

[4] ibid. para 93

[5] Regina v Johnstone [2003] UKHL 28

[6] ibid. para 21

[7] Trade Marks Act 1994 c. 26, s. 10 (5)

[8] CHEETAH Trade Mark [1993] F.S.R. 263

[9] Trade Marks Act 1994 c. 26, s. 10 (6)

[10] Cable & Wireless Plc. v British Telecommunications Plc. [1998] F.S.R. 383

[11] ibid. para 32, abogados de accidentes Florida