It is stated that a person commits an infringing act if they use in the course of trade, a sign that is identical to the trademark in relation to goods and services that are identical with those for which it is registered. It is important to note, however, that any act of infringement is not required to of held any previous knowledge or intention to carry out the act. Reason for this being that any monopoly created through a registered mark is absolute
Any owner wishing to demonstrate an act of infringement towards their mark will be required to prove that:
- The sign is identical to the mark and is used in relation to goods and services that are identical with those for which it is registered.
- The sign is identical and is used in relation to goods and services that are similar.
- The sign is similar and is used in relation to goods and service that are identical.
A person can also be found to be infringing a mark if:
- The sign is identical or similar to the mark.
- Is used in relation to goods and services that are not similar.
When attempting to establish whether an infringement has occurred, guidance can also be found in the case of British Sugar v Robertson. Justice Jacob gave the following points to consider:
- The respective uses of the respective goods or services.
- The respective users of the respective goods or services.
- The physical nature of the goods or acts of service.
- The respective trade channels through which the goods or services reach the market.
- In the case of self-service consumer items, where in practice they are respectively or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves.
- The extent to which the respective goods or services are competitive with each other.
Article kindly supplied by Lawdit Solicitors, specialists in intellectual property, internet and e-commerce issues. Lawdit offers discounted fees for all Freelance Alliance members.
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