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

As of exit day (31 January 2020) the UK is no longer an EU Member State. However, in accordance with the Withdrawal Agreement, the UK has entered an implementation period, during which it continues to be subject to EU law. This has an impact on this Practice Note. For further guidance, see Practice Note: Brexit—IP rights.

Rights conferred by a trade mark registration

The registration of a trade mark gives the owner the exclusive right to prevent others from using that mark without their consent. The rationale behind the protection is to ensure that the 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 that they 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.

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 that the rights are negative in nature: registration of a trade mark