Trade mark infringement
Trade mark infringement

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Trade mark infringement
  • Rights conferred by a trade mark registration
  • Types of infringement of a registered trade mark
  • Who can bring a claim?
  • When to begin infringement proceedings
  • Meaning of 'in the course of trade'
  • Meaning of 'use in relation to goods and services'
  • The acts constituting use of a sign
  • Identical signs and identical goods/services
  • Identical signs and similar goods/services or similar signs and identical goods/services plus likelihood of confusion/association
  • more

Rights conferred by a trade mark registration

The registration of a trade mark gives the owner the exclusive right to prevent others from using thatmark without their consent. The rationale behind the protection is to ensure thatthe registered trade mark acts as a 'guarantee of origin' in relation to the goods and services for which it is registered. If a member of the public buys a can of Coca-Cola, they are entitled to assume thatthey are buying the well-known original soft drink and not an imitation. If someone else uses a registered trade mark, or a confusingly similar one, without permission from the trade mark owner, there may be a claim for trade mark infringement.Trade Marks Act 1994, s 9(1)Arsenal Football Club v Reed [2003] 3 All ER 865

The Court of Appeal's decision in R (on the application of British American Tobacco) v Secretary of State for Health includes a detailed analysis of the rights conferred by a trade mark registration and concludes thatthe rights are negative in nature: registration of a trade mark does not give rise to a positive legal right to use it, but rather to a negative right to stop others from using it. For more information, see News Analysis: In Brief: Court of Appeal rejects tobacco plain packaging appeals (R (on the application of British American Tobacco and others) v Secretary of State for Health).R (on the application of British American Tobacco) v Secretary of State for Health [2016] EWCA Civ 1182

For further information on the rights conferred by a registered trade mark, see: Rights conferred by a