Q&As

Is it possible for the proprietor of a UK trade mark registration to enforce it against the holder of a confusingly similar EU trade mark registration in the UK? If so, what are the relevant legislative provisions that should be relied on in a letter before action for trade mark infringement?

read titleRead full title
Produced in partnership with Daniel Byrne of AA Thornton
Published on LexisPSL on 08/02/2019

The following IP Q&A produced in partnership with Daniel Byrne of AA Thornton provides comprehensive and up to date legal information covering:

  • Is it possible for the proprietor of a UK trade mark registration to enforce it against the holder of a confusingly similar EU trade mark registration in the UK? If so, what are the relevant legislative provisions that should be relied on in a letter before action for trade mark infringement?

Is it possible for the proprietor of a UK trade mark registration to enforce it against the holder of a confusingly similar EU trade mark registration in the UK? If so, what are the relevant legislative provisions that should be relied on in a letter before action for trade mark infringement?

It is assumed that the confusingly similar EU trade mark was registered later than the UK trade mark. It is also assumed that the holder of the confusingly similar EU trade mark is using it in the UK in the form it is registered. In conducting our research, we have focused on the relevant legislative provisions. The extent of the similarity or the likelihood of confusion between the trade marks would need to be carefully assessed on the facts of any particular case.

The relevant legislation for trade mark infringement of a UK trade mark is the Trade Marks Act 1994 (TMA 1994).

TMA 1994, s 10 deals with infringement and where the sign being used is similar to the registered mark, the relevant sections will be TMA 1994, s 10(2)(b) (where the goods and services are identical or

Related documents:

Popular documents