Avoiding trade mark infringement and passing off claims
Produced in partnership with Boyes Turner LLP
Avoiding trade mark infringement and passing off claims

The following IP practice note produced in partnership with Boyes Turner LLP provides comprehensive and up to date legal information covering:

  • Avoiding trade mark infringement and passing off claims
  • What is a trade mark?
  • Registered trade marks
  • Defences to trade mark infringement action
  • Unregistered trade marks
  • Practical points—how to reduce the risk of infringing a trade mark
  • When trade mark infringement seems likely
  • Practical points—how to protect a trade mark registration and avoid litigation
  • Other considerations

This Practice Note refers to both UK trade mark registrations and EU trade mark (EUTM) registrations and includes references to both UK and EU case law and legislation. The UK is no longer subject to Regulation (EU) 2017/1001 (OJ L154 of 16.06.2017, p. 0001-0099), which was revoked on IP completion day (11.00 pm on 31 December 2020) and therefore, EUTMs are no longer protected in the UK. Holders of an existing EUTM as at IP completion day automatically became the holder of a comparable trade mark registration in the UK. For further information, see Practice Note: What does IP completion day mean for intellectual property?

This Practice Note contains references to case law of the Court of Justice. Broadly, EU judgments handed down on or before 31 December 2020 continue to be binding on UK courts and tribunals (even if the EU courts later depart from them) until the UK courts exercise their powers to diverge. For the most part, EU case law made after that date is not binding on the UK, although the UK courts and tribunals may continue to ‘have regard to’ EU judgments if relevant. For more detailed information on the treatment of EU case law, see Practice Note: Introduction to retained EU law.

Litigation is an expensive and time consuming process. While there may be occasions when tactically it makes sense

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