Trade mark infringement can be loosely defined as the unauthorised use of a registered trade mark by any third party in the course of trade.
In fact, the purpose of a trade mark registration is to provide the owner with a monopoly right in a sign used by them to distinguish their goods or services from those of others and, if an identical or confusingly similar right is used by a third party, to give them the tools needed to bring an action to prevent such use .
Today we discuss the basics of infringement to provide owners of registered trade marks with some information on infringement, to enable them to identify possible cases of infringement and take the necessary action. This information will also be useful for brand owners and traders who may be unsure whether they might be infringing upon the rights of others. Next week we’ll be looking at Patent Infringement.
What Constitutes Use of a Trade Mark
For an action of trade mark infringement to be brought in Ireland, the mark must be registered and therefore, this action cannot be brought to prevent use of unregistered rights (although a passing-off action may be available). A trade mark must also be used “in the course of trade”. This means that the alleged infringer (the third party) must be using the mark in the context of commercial activity with a view to economic gain and not in private. (Arsenal Football Club plc v Matthew Reed).1
Section 14(4) of the Trade Marks Act, 1996, outlines the main activities which constitute offending use:
- “affixing it to goods or the packaging thereof;
- offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign;
- importing or exporting goods under the sign; or sign
- using the sign on business papers or in advertising.
- using the sign as a trade or company name or part of a trade or company name; or
- using the sign in comparative advertising in a manner that is contrary to the European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 (S.I. No. 774 of 2007).”
In certain cases, if not acting in good faith, the person who applies the registered mark to labelling or packaging could also be considered to be guilty of secondary infringement. It is always important to consult with an attorney in cases where you have doubts with regards to this sort of activity.
Three Categories of Trade Mark Infringement
According to Section 14 of the Trade Marks Act, 1996 instances of trade mark infringement can be divided into three categories as shown as follows:
When a person uses a trade mark:
- Which is identical:
- On identical goods or services
- Which is identical OR similar:
- on similar goods or services,
- on identical OR similar goods or services :
- It must be shown that there is likelihood of confusion on the part of the public including a likelihood of association
- Which is identical OR similar;
- on dissimilar goods,
- on identical or similar or dissimilar goods:
- It must be shown that the trade mark has a reputation and the third party is taking unfair advantage of the mark, or causing damage to the distinctive character or reputation of the mark
In the first scenario, a straightforward example would be if the word ‘PAYTO’ was registered as a trade mark for potato chips in Class 29 and a third party starts selling potato chips under the name ‘PAYTO’. In this case there would be automatic infringement. However, it is rarely the case that infringement actions are so easily identified and it is more often the case that one has to determine whether the two marks are in fact identical.
In LTJ Diffusion SA v Sadas Vertbaudet SA2 it was decided that the word “ARTHUR” was not identical to the mark “ARTHUR ET FELICIE.” The ECJ held that for two marks to be identical, one mark must reproduce all the elements of the other without any modification or addition, or where the differences between the two are so insignificant that they may go unnoticed by an average consumer.
In the second scenario, taking the same example of ‘PAYTO’ registered as a trade mark for potato chips in Class 29, there may be a case of infringement if there exists a likelihood of confusion and :
- a third party sells potato chips using the name ‘PAYTOW’
- a third party sells kale chips using the name ‘PAYTO’
- a third party sells kale chips using the name ‘PAYTOW’
The requirement of likelihood of confusion is crucial in this scenario and to determine its presence several elements must be considered cumulatively. In Canon v. MGM,3 the ECJ held that all the relevant factors of the goods and services being compared need to be taken into account. These factors include the nature of the goods, “their end users and their method of use and whether they are in competition with each other or are complementary”. It was not necessary to prove that the public think that the goods or services came from the same undertaking but it was enough for them to think that they came from economically-linked undertakings, such as a sub-brand for instance.
In the third scenario above, once again referring to our ‘PAYTO’ example for potato chips in Class 29, if a third party starts selling a different product or service such as ‘Recycling of waste and trash’ in Class 40 using the name ‘PAYTO’ or ‘PAYTOW’, or ‘PAYTOW’ for potato chips – even if there is no risk of confusion, since the registered mark ‘PAYTO’ has a reputation and the other trader may be considered to be tarnishing, diluting or taking unfair advantage of the ‘PAYTO’ mark – this may be considered enough to be infringement.
In Davidoff v Gofkid,4 the CJEU held that infringement arises where the degree of similarity is such that the relevant section of public establishes a link between the mark and the sign even though it does not confuse them. This avoids a situation of possible dilution as shown in the PAYTO example above. However, in order to invoke this action, the plaintiff must prove that the mark has a reputation for the goods and services within the registered territory.
How to detect/avoid cases of potential infringement?
If you are in the process of adopting a trade mark, it’s advisable to check whether your proposed trade mark, or a confusingly similar mark, already exists. A trade mark attorney would be able to carry out a comprehensive search covering the jurisdiction in which you intend to use your mark.
Once you have secured your trade mark through registration, it is good practice to regularly monitor how your mark is being used in public. The most efficient way to do this is to scan social media platforms for any unauthorised use of your trade mark, be it use of your logo, brand name etc., or even mention of your brand. If a third party is identified using a confusingly similar trade mark, consult a trade mark attorney for advice.
A trade mark attorney can also provide you with a Watching Service. If any conflicting trade mark applications are identified they can advise you on the best action to take concerning them.
The Way Forward
This is of course a brief overview of what constitutes infringement. If you would like to discuss this topic further or would like to discuss a case which you suspect could be infringing upon your rights, or are unsure whether your trade mark is an available and suitable form of protection, feel free to contact Maclachlan & Donaldson at firstname.lastname@example.org or email@example.com to discuss this with one of our experienced Attorneys.
 Case C-206/01 Arsenal Football Club plc v Matthew Reed  ECR I-10273.
 Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA  ECR I-02799.
 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.  ECR I-05507.
 Case C-292/00 Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd  ECR I-00389.