Can you rely on the reputation of your trademark to prevent infringement?

Can you rely on the reputation of your trademark to prevent infringement?

Section 10 (3) of the Trade Marks Act 1994: an effective provision under the Act?

This particular section of the Trade Marks Act 1994 (the ‘Act’) is often seen as a potentially strong ‘second string’ to some infringement claims, least of all because the element of confusion need not be demonstrated. However, it is not enough for a trade mark owner to purely rely on its mark’s reputation when depending upon this statutory provision to enhance a trademark infringement claim. 

In any matter of litigation, especially with claims of trade mark infringement it is imperative that such claims are substantiated in accordance with the Practice Direction – Protocols, paragraph 4.1, which states: 

‘the court expects the parties, in accordance with the overriding objective … to act reasonably in exchanging information and documents relevant to the claim and generally in trying to avoid the necessity to start proceedings.’ 

Therefore the following has been set out to address each element of section 10 (3) of the Act, which will need to be demonstrated in order to endorse a claim of this nature:

 In respect of taking an unfair advantage of another’s trade mark, an owner must evidence that an infringer has in some way exploited the reputation of its trade mark to the extent that it has profited from such an act. Merely suggesting that there is a similarity between the trade marks will be insufficient. There must be some tangible link to demonstrate a transfer of value from the owner’s trade mark to the infringing trade mark via some marketing (or other) activity.

For there to exist a detriment to the distinctiveness of another’s trade mark, an owner will need to show such a detriment or tarnishment of its trade mark. Not to do so would fail to establish any real damage to the trade mark. The owner will need to demonstrate that the infringing trade mark in some way lessens the owner’s ability to identify and distinguish its products, or prejudices its trade mark’s distinctive character.

 To establish a ‘damage to reputation’ an owner will need to show that the infringing trade mark has in some way evoked some objectionable mental state in the mind of the relevant consumer in respect of its products, which would conflict with the trade mark owner’s aspirations. Therefore some detrimental or negative association will need to be shown together with requisite damage. 

It can be seen that section 10 (3) of the Act is not designed to have some wider implication of preventing the use of those similar marks to one that has a particular reputation. Evidence must be produced to satisfy the above criteria required under section 10 (3) rather than some loose reliance on a perceived reputation that is some way distorted by virtue of some other identical or similar mark that is in existence.

Trademark Infringement

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