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Trade Mark Infringement when Using Similar Marks

Thursday, 24 January 2013

Many businesses ignore the potential consequences of trade mark infringement when using similar marks or signs that are similar to registered trade marks. With cases of trade mark infringement on the rise, businesses should give serious thought to whether the use of particular marks or signs could provoke legal action from registered trade mark owners.

Legislation Regulating Trade Mark Infringement

The Trade Marks Act of 1994, which replaced the Act of 1938 and implemented the European Union Trademarks Directive, governs the law relating to infringement of registered trademarks. Under the Act, a person is said to have infringed a trade mark when the similarity of a mark or sign creates a likeliness of confusion in the minds of the general public about the source of goods or services.

The law also applies where traders deal in different goods and services, but the use of the marks or signs by one poses detriment to the distinctive character or reputation of the other. In cases of unregistered trademarks, owners must rely on the common law principle of passing off.

Trade Mark Infringement From Using Design Elements

In the recent past, Courts have also provided protection against use of similar marks or signs not held as trade marks per se but that merely form design elements. The use of design elements, according to the Courts, constitutes infringement if there is confusion in the minds of the public who are led to believe that the goods or services have a particular source. Courts have held that such use is aimed at taking unfair commercial advantage of the exclusive market reputation and overall goodwill of the trademark owner.

Infringement does not usually extend to cases where identical marks or signs are used for goods or services which are so different in their nature and scope that there cannot be any reasonable confusion in the minds of the public about their source.


Businesses must take precautions before registering new trade marks or otherwise using marks similar or identical to existing marks or signs. To avoid litigation it is advisable to conduct exhaustive searches on similar existing trade marks, and on those design elements which have acquired distinctiveness through their continuous use in the market place. Businesses should take particular note of the likeness of the marks, signs, or other design elements, and whether they can be said to be well known and highly distinctive.

Trade marks can be tricky area of law to navigate and we recommend that businesses seek appropriate advice to avoid legal claims being made against them or to protect their brand from infringements. Rollingsons has experienced lawyers who can assist you; please contact James Crichton via e-mail or by telephone on 0207 611 4848.