Advice about trademark infringment |
Trademark infringement
The courts regard trademark infringement as a serious matter. In many cases, it may be preferable for parties to conclude a trademark agreement to regulate future progress.
Battle assists parties deal with trademark infringement.
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Infringement of a registered trademark or copying is a serious matter
Infringement of a registered trademark ... or copying of a registered trademark ... may be an offence. Certain criteria are applied to determine the nature, and scope of what has been infringed.
How does trademark infringement happen?
How does trademark infringement happen?
Regsitered trademark infringement can happen in a number of ways. And trademark infringement does happen. There are several cases of trademark infringement that have appeared before the courts.
Usually, the rights of an owner of a registered trademark are infringed if another party seeks to copy or use their brand to climb on the reputation of the owner. This usually happens when business names are copied. It also happens when counterfeiters try to sell certain goods that are not genuine. For example, Louis Vuitton has engaged in using its registered trademark rights to sue web-site selling counterfeit handbags, or to sue search engines that allow counterfeit adwords, or ways of attracting customers to counterfeit or imitation goods.
Courts defend registered trademarks against infringement
Registered trademarks hold a strong position on account of the nature of trademark registration. Registered trademarks hold title, that the courts tend to uphold. Because a person registers a trademark, the law provides an exclusive right to that person to use the registered trademark for certain goods and services. Registering a brand helps to stop copying brands by competitors. This brings into question as to how such a right might come to be infringed. Indeed, several key issues can arise in trademark infringement proceedings. Some of the issues in trademark infringement court cases include: -
- how closely do the trademarks resemble each other?
- whose trademark is registered, and therefore, protected?
- how similar are the goods and services being traded?
- is there a likelihood of confusion of the brands with consumers?
- would consumers associate a sign with a registered trademark owner?
The Court judgments tend to defend the rights held by holders of registered trademarks. However, certain elements involved in trademarks are not capable of being protected, and therefore may not be infringed. Examples of situations where an allegation of trademark infringement may be difficult to sustain include trademarks that may be questionable as to certain characteristics, for example: -
- is the trademark devoid of distinctive character?
- is the trademark merely a description of the goods or services?
- are there any limitations imposed in the registration?
- are there any earlier rights involved?.
- is the registered trademark capable of being revoked or invalidated?
- there is no trademark infringement in the use of a trademark where it is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts.
Oppositions and registered trademarks
When an application to register a trademark has been accepted, the trademark is examined, and once approved for registration it is then advertised for a period of three months. The purpose of the advertisement of the details of the trademark registration is to allow other parties to oppose the registration. Trade mark opposition can be filed by interested parties to seek to prevent the registration of a trademark, during this three month period.
Once a trademark opposition has been filed, the application for registration is put through an additional process that may or may not prevent the registration from occuring.
So it may be very worthwhile looking at using trademark opposition or trademark monitoring as a suitable additional tool for protection. Opposing the registration of a trademark can involve a wide range of matters, some of which are embodied into the following:
- what are the grounds of the trademark registration opposition?
- what claims are included in the opposition case?
- what rights are currently held?
- how strong is the case for opposition?
- how strong is the case for defending the opposition to trademark registration?
In certain cases, it is useful to obtain advice when dealing with opposition proceedings, or when faced with a claim of trademark infringement. We can provide you with an opinion concerning such trademark opposition or infringement matters, before you decide on which course of action is most suitable to your case.
Visit our Da Vinci code - trademark v copyright page to see whether copyright or trademark registration is stronger. To see more about registering trademarks for films, television programmes or cartoon characters, go to the trademark character merchandising page.
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Battle advises organizations, solicitors, and accountants' clients on a range of matters concerning trademarks. Click here to see more Battle trademark services for our range of other trademark services.