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Protecting a Trademark

Trademark Infringement

Updated, April 2015

1. What is trademark infringement?

Trademark infringement is the interference with or violation of another party’s trademark rights through the unauthorized use of that party’s mark or a confusingly similar mark. The basic test for trademark infringement is whether the use of a trademark by one party is such that it can create a likelihood of confusion among consumers in the relevant marketplace in relation to an identical or similar trademark belonging to another party. A trademark does not have to be an exact copy of another mark in order to be considered infringing.

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, in the course of trade, with a prior mark among the relevant consumers. Trademark law in some jurisdictions incorporates both concepts.

2. Must an infringer be a competitor?

In order to prevail in a claim for trademark infringement, it may be helpful for the owner of a prior-registered or prior-used (depending on the jurisdiction) trademark to show that an infringer’s goods or services compete with those identified by the owner’s mark. 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 trademark registration.

Within certain jurisdictions, such as Australia or the European Union (EU), 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 generally is 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.

Passing off occurs when a party attempts to pass off its products as those of a third party. An example would be an unknown computer manufacturing company that claims that its computers are Apple computers. In some common law countries, such as the United Kingdom, Australia and Nigeria, passing off is a tort that can be used to enforce unregistered trademark rights.

Trademark dilution is a claim that can be made only in respect of famous marks. Basically, it alleges that a similar mark dilutes the distinctive quality of the plaintiff’s famous mark by blurring or tarnishing the image of that mark. In deciding whether a mark is famous, courts will likely consider, inter alia, some of the following factors: (1) the degree of inherent or acquired distinctiveness of the mark; (2) the duration and extent of use of the mark; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in the relevant trades; (7) any use of similar marks by third parties; and (8) whether the mark is registered. Unlike the case with an infringement claim, a finding of likelihood of confusion is not necessary for a plaintiff to prevail in an action for trademark dilution.

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 a famous or well-known prior mark and that weakens the distinctiveness of the prior mark by blurring or tarnishment.

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

Counterfeiting is the manufacture or sale of inauthentic goods under a spurious mark, both made to resemble the originals. Besides the available civil remedies for counterfeiting, some jurisdictions also allow criminal remedies.

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 prior-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 manufacture, sale or distribution of counterfeit goods constitutes trademark infringement, even though not every instance of trademark infringement will involve counterfeit goods.

See also Counterfeiting Fact Sheet

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 in which it has 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 injunctive relief and damages as remedies for infringement. The availability of attorney’s 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.

See also Practitioners’ Checklists
Cease and Desist Letter for Trademark Infringement, Unfair Competition, or Claim of Dilution

6. What benefit does trademark registration provide in case of trademark infringement?

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

In some 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 EU, 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.

Across the globe, depending on the jurisdiction, the benefits of registering a trademark may include the following: (1) it is the sole means of obtaining right or title to the trademark; (2) it provides prima facie evidence of ownership and validity; (3) it provides regional, national or local protection; (4) it allows use of “Registered Trademark” or other suitable abbreviations to demonstrate ownership of the trademark; (5) it allows access to bring actions in particular courts; (6) it helps to deter others from unlawfully using the trademark; (7) it provides a defense to infringement; (8) enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark; and/or (9) it confers the ability to recover maximum monetary damages for infringement.

Additional INTA Resources

Topic Portal: Anticounterfeiting

Topic Portal: Enforcement

Country Guides: Essential Information on Trademark Protection Worldwide
Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions. INTA membership required.

Trademark Administration
Now available online in an updated, expanded and enhanced format, this classic training tool provides a thorough introduction to trademark practice and procedure for administrators or young practitioners. INTA membership required.

Brand Protection on the Internet: Domain Names, Social Media, and Beyond
by Brian J. Winterfeldt

U.S. Trademark and Unfair Competition Litigation
by William M. Bryner

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