This Practice Note covers infringement of UK trade marks registered under the Trade Marks Act 1994 (TMA 1994). It considers types of trade mark infringement, who may bring a claim, the meaning of statutory provisions and relevant case law. 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

IP analysis: The French Court of Cassation made a referral to the Court of to provide a preliminary ruling on the interpretation of Article 3(1)(g) of Directive 2008/95/EC and the circumstances in which a number in a trade mark may be interpreted as deceptive. The Court of Justice determined that it may be inferred that a trade mark is of such as nature as to deceive to the public within the meaning of Article 3(1)(g) in circumstances where a trade mark includes a number which the relevant public is likely to perceive as indicating a business's year of establishment and, because this year is in the distant past, it evokes long-standing know-how which confers a perceived guarantee of quality and prestige on the goods for which the mark is registered, even though no such long-standing know-how actually exists. Written by Vanessa Pearson, associate solicitor at Lee & Thompson LLP.

EU law analysis: Goyard applied to invalidate two French registrations of semi-figurative trade marks that include the year ‘1717’ on the basis that the inclusion of the year would deceive the public into believing Fauré Le Page had been in business since that year, conveying a level of history and prestige that Fauré Le Page could not lay claim to. The Cour de Cassation in Paris referred the case to the Court of Justice for an interpretation of the scope of Article 3(1)(g) of Directive 2008/95/EC and its application to the facts of the present case. In the AG's opinion, the inclusion of a mere year in a trade mark with no clear indication that it refers to the year of establishment of the proprietor does not constitute a sufficiently specific description of a characteristic of the goods/services nor lead to the registration being declared invalid. Further, the inclusion of a year which may be taken as the year of establishment of the owner, when that is not the case, cannot, on its own, lead to the invalidity of the registration. Written by Helene Whelbourn, legal director at Lee & Thompson LLP.

1 Definitions 1.1 In this clause: Brand • means the Trade Marks,[ Designs,] goodwill and other Intellectual Property Rights relating to the luxury brand [insert name of brand]; Brand Guidelines • means the guidelines produced by the Licensor setting out the manner in which the Trade Marks[ and Designs] may be used, [the current version of which is annexed at [insert schedule] to this Licence OR can be found at [insert link]] [and which may be amended from time to time upon notice in writing by the Licensor to the Licensee]; [Designs • means the registered design rights or applications for registered designs listed at [insert cross-reference to schedule] to this Licence, together with any other unregistered design rights [listed at [insert cross-reference to schedule] to this Licence OR notified in writing to the Licensee by the Licensor from time to time];] Effective Date • means [insert date]; Intellectual Property Rights • means all copyright, rights related to copyright such as moral rights and performers rights, patents, rights in inventions, rights in confidential information, know-how, trade secrets, trade marks, geographical indications, service marks, trade names, design rights, rights in get-up, database

IP analysis: The Court of Appeal held that the ability to recover losses suffered by trade mark licensees under section 30(6) of the Trade Marks Act 1994 (TMA 1994) forms part of the statutory protection denied to unregistered licensees by TMA 1994, s 25(3)(b). As a result, losses suffered by unregistered licensees or sub-licensees are not recoverable unless the relevant licence has been registered within the applicable limitation period. The decision emphasises the importance of promptly registering trade mark licences and clarifies the relationship between registration requirements and damages claims. It also highlights the need for practitioners to plead licensees’ losses at the outset of infringement proceedings to avoid procedural and limitation difficulties. Produced in partnership with Michael Smith of Three Stone Chambers.

How to use this Checklist This Checklist identifies the key terms typically included in a trade mark licence. It can be used as a checklist of issues to consider when drafting, reviewing or negotiating trade mark licences. For further information on the legal provisions underpinning trade mark licensing, and the formalities required, see Practice Note: Licensing intellectual property rights. For guidance on the practical points to take into account when drafting a trade mark licence, see Practice Note: Drafting a trade mark licence—a practical guide. This Checklist can also be adapted for use as a heads of terms to record basic agreed terms while a formal trade mark licence is being negotiated. For guidance on how to do this, see Precedent: Heads of terms—commercial contracts. Checklist schedule for proposed trade mark licence Points to consider Further information Notes (if any) (A) Key commercial considerations ☐ Parties Confirm which entities will be party to the agreement—identify which entity owns the trade marks (ie the licensor) and which entity will be using them (ie the licensee). Confirm each party’s legal

This Licence is made on [insert date] Parties 1 [insert name of party] [of [insert address] OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (the Licensor); and 2 [insert name of party] [of [insert address] OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (the Licensee), (each of the Licensor and the Licensee being a party and together the Licensor and the Licensee are the parties). BACKGROUND: (A) The Licensor is the registered proprietor of certain trade marks [insert brief details of the trade marks]. (B) The Licensee wishes to use the trade marks to [insert activities to be permitted under the licence (eg manufacture)] the [insert brief details of the products] in the territory. (C) The Licensor has agreed to license to the Licensee rights to use the trade marks to [insert activities to be permitted under the licence (eg manufacture)] the [insert brief details of the products] in the territory on the terms of this Licence. (D) [[insert other recitals as appropriate].] The

This Agreement is made on [insert date] Parties 1 [insert name], a company incorporated in [England and Wales] under number [insert company number] whose registered office is at [insert address] (Licensor); and 2 [insert name], a company incorporated in [England and Wales] under number [insert company number] whose registered office is at [insert address] (Licensee), (each of the Licensor and the Licensee being a party and together the Licensor and the Licensee are the parties). Background (A) The Licensor [is the[ registered] proprietor of OR is the applicant to register OR has the right to license and/or sublicense] certain trade marks. (B) The Licensee is [insert background to licence/relevant transaction]. (C) The Licensor has agreed to grant a licence of these trade marks to the Licensee and the Licensee has agreed to take a licence of the trade marks on the terms of this Licence. agreeMent: 1 Definitions and interpretation 1.1 In this Licence: Brand Guidelines • means the guidelines produced by the Licensor setting out the manner in which the Trade Marks may be used, as set out in Schedule 3 to this Licence; Business Day

This Agreement is made on [insert date] Parties 1 [insert name], a company incorporated in [England and Wales] under number [insert company number], whose registered office is at [insert address] (Licensor); and 2 [insert name], a company incorporated in[ England and Wales] under number [insert company number], whose registered office is at [insert address] (Licensee), (each of the Licensor and the Licensee being a party and together the Licensor and the Licensee are the parties). BACKGROUND (A) The Licensor [is the[ registered] proprietor of OR is the applicant to register OR has the right to license and/or sublicense] certain trade marks. (B) The Licensee is [insert background to licence/relevant transaction]. (C) The Licensor has agreed to grant a licence of these trade marks to the Licensee and the Licensee has agreed to take a licence of the trade marks on the terms of this Licence. agreeMent: 1 Definitions and interpretation 1.1 In this Licence: Advance • means the sum of [insert]; Brand Guidelines • means the guidelines produced by the Licensor setting out the manner in which the Trade Marks may be used[ the current version of which [is annexed at Schedule

Trade mark litigation procedure—framework This Practice Note summarises trade mark litigation procedure. The Intellectual Property List is a specialist list within the Business and Property Division of the High Court, which includes the Patents Court and Intellectual Property Enterprise Court (IPEC) sub-lists. Trade mark disputes are usually heard in the general Intellectual Property List or the IPEC sub-list. The Business and Property Division took effect on 1 October 2026. It combines the former Chancery Division and the other former Business and Property Courts within a single division of the High Court. For more information, see News Analysis: The new Business and Property Division of the High Court. This Practice Note deals with the procedure for starting proceedings, preparing and serving statements of case, case management, disclosure and inspection, evidence and trial. It also covers costs and timetable. This Practice Note concerns proceedings brought in relation to UK trade mark registrations, which are governed by the Trade Marks Act 1994 (TMA 1994). For more information about the law underpinning trade mark infringement and enforcement, see Practice Notes: Trade

For certain types of trade mark infringement cases (such as wilful infringement for the purpose of manufacturing counterfeit goods), the usual civil remedies may be considered inadequate by the trade mark owner and from a public policy perspective. For such cases, there are criminal sanctions available under the Trade Marks Act 1994 (TMA 1994). These sanctions are most often used against parties involved in counterfeiting goods, where false trade marks are applied in order to imitate the products of leading manufacturers. However, TMA 1994 has a far wider reach to impose criminal penalties for other forms of unauthorised trade mark use, including offences without any evidence of dishonesty. Trade mark crime should be considered in the wider context of IP crime and, in particular, may overlap with copyright and design crimes. For example, the production of a pirate film on DVD would be a copyright crime while the production of the DVD packaging including copies of a film studio's marks would be a trade mark crime. Any intentional coping of products protected by registered designs may also constitute

Introduction We [insert company name] own and control a number of trade marks which enhance and protect the value of our brand(s) and are therefore integral to the value of our business. This policy sets out guidance on the creation, use and protection of our trade marks. You are required to comply with this policy but if there are any parts you do not understand, please contact the Trade Mark Officer (for contact details, see section below ‘Who to contact about this policy’). What is a trade mark? A trade mark is usually a word, name, symbol, logo or phrase that is used on our products, packaging, websites, marketing materials and any other communication. Our most widely-used trade marks are [insert examples]. Trade marks help to distinguish our goods[ and services] from those of our competitors. As such, they serve as a ‘badge of origin’ and a promise of quality to our customers. Trade marks are usually registered (in a single country or a selection of countries) but unregistered trade marks may also qualify for protection. [It