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Trademark Infringement

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1. What is trademark infringement?

Trademark infringement is the use by another of the same or a similar mark that violates the prior trademark rights of another in the jurisdiction where such use occurs. The legal definition of infringement varies from one jurisdiction to another. The most common standards for infringement are: (a) close similarity of a mark and its associated goods and/or services to a prior mark and its associated goods and/or services; or (b) use of a mark that creates a likelihood of confusion with a prior mark among the relevant consumers. Trademark law in some jurisdictions incorporates both concepts.


2. Must an infringer be a competitor?

In proving infringement it may be helpful for the owner of a prior-registered trademark to show that an infringer’s products or services compete with those identified by the owner’s mark. Proving infringement does not necessarily require such a showing, however. In most countries, a trademark owner need only show that the purported infringer’s goods and services are sufficiently related to those identified by the owner’s mark that consumer confusion is likely. In some jurisdictions, however, the trademark owner must show that the infringing goods and/or services are within the scope of the goods and/or services specified in the owner’s registration.

Within certain jurisdictions, such as Australia or the European Union, it is possible for a trademark owner to establish infringement without proving a likelihood of confusion. The trademark owner must establish that its prior mark has a high degree of reputation or recognition and that the use of the later mark is without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the prior mark.


3. How does trademark infringement differ from unfair competition, passing off, trademark dilution and depreciation of goodwill?

Many civil law countries have unfair competition statutes, and most common law countries recognize the torts of unfair competition and “passing off.”

The focus of unfair competition claims is generally on consumer deception or threat to business interests. Although such claims may overlap with trademark infringement, the burden of proof in an unfair competition claim generally is higher for the trademark owner than when it seeks to prove infringement of its registered mark.

In some jurisdictions, the concept of unfair competition also may be broader than that of trademark infringement. For example, false or misleading advertising claims may constitute unfair competition even if such statements would not constitute trademark infringement.

Some countries also have statutes that protect famous or well-known marks from trademark dilution, depreciation of goodwill or similar concepts, which can arise when a newcomer adopts a mark that is the same as or very similar to famous or well-known prior-registered trademark and that weakens the distinctiveness of the prior mark by blurring or tarnishment. To prevail in an action for trademark dilution, the owner of the prior mark generally does not have to show a likelihood of confusion.


4. How does trademark infringement differ from counterfeiting and cybersquatting?

Counterfeiting is the practice of producing goods, often of inferior quality, and selling them under a brand name without the brand owner’s authorization. Besides the available civil remedies for counterfeiting, in some jurisdictions counterfeiting is considered a criminal offense.

Generally, counterfeit goods are sold under a mark that is identical to or substantially indistinguishable from a mark that is registered for the same goods, without the approval or oversight of the owner of the registered mark. In contrast, trademark infringement or passing off can arise through the use of a mark that is similar for goods that are commercially related. With trademark infringement or passing off, the mark at issue does not have to be identical to or substantially indistinguishable from the prior mark, and the goods or services do not have to be identical to those identified by the prior mark. The sale or distribution of counterfeit goods constitutes trademark infringement even though not every instance of trademark infringement will involve counterfeit goods. More on counterfeiting.

Cybersquatting is the practice of obtaining in bad faith domain name registrations that incorporate trademarks (or names of famous people) with which the registrant has no connection or no legitimate interest. Cybersquatting may not necessarily constitute trademark infringement, particularly if the registrant is not using the domain name (trademark) in connection with the bona fide sale of goods or services or otherwise in a manner that is likely to cause confusion. Trademark infringement involving a domain name may not necessarily constitute cybersquatting where there is an absence of bad faith. Statutory and regulatory regimes may provide a mechanism for trademark owners to use to address cybersquatting.


5. How can one redress infringement?

Trademark laws typically provide for damages and injunctive relief as remedies for infringement. The availability of attorneys’ fees as a remedy varies significantly both under specific trademark laws and under general legal procedures of various countries. Under some circumstances—and particularly where the goods are determined to be counterfeit—seizure, impoundment and destruction of the infringing goods may be available. Some jurisdictions allow for awards of statutory damages, enhanced damages, recovery of the infringer’s profits and other remedies.

Furthermore, many jurisdictions recognize trademark-related criminal offenses, such as, among others, counterfeiting and forgery. A party guilty of such offenses may be liable for a fine, imprisonment or both.


6. How does registration aid in addressing trademark infringement?

Ownership of a registered trademark is a prerequisite for bringing a trademark infringement action in most countries.

In common law countries, including Canada, the United Kingdom and other British law countries, and the United States, enforceable trademark rights may be acquired through use and reputation. However, even under common law regimes, registration provides important procedural and substantive advantages in prosecuting infringements.

In the European Union, a Community trade mark registration is a single registration that confers protection in the entire territory of the EU. In the United States, ownership of a federal trademark registration on the Principal Register provides several benefits, including establishing prima facie evidence of the ownership and validity of the registered mark in an infringement claim and providing an opportunity for the trademark owner to assert and recover more significant remedies in a counterfeiting claim.


Additional INTA Resources

Topic Portal: Anticounterfeiting

Topic Portal: Enforcement

Global Protection and Enforcement of Trademarks PowerPoint Presentation

Case Excerpts on Survey Evidence in U.S. Litigation

Trademark Surveys—United States and International Perspectives Fact Sheet

Country Guides: Essential Information on Trademark Protection Worldwide

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