Infringement and Validity
It is an infringement of a registered trade mark:
- to use a mark that is identical to a registered mark, and that is used on identical goods or services to those registered, unless the owner of the registration has given their permission;
- to use a mark similar to a registered mark, on goods or services that are similar to those of the registration, such that there would be a likelihood of confusion in the market.
The proprietor of a registered trade mark may take action against an infringer. This can result in an injunction to prevent continued infringement, together with damages and costs.
There are several defences against an allegation of trade mark infringement:
- That it is not considered to be an infringement of a trade mark to use another registered trade mark. Thus by achieving registration of a trade mark, it is a protection against an allegation of infringement.
- That it is not considered to be an infringement of a registration to use one’s own name and address. This applies to personal names, and is assumed to apply to company names when used in full. This has not yet been tested in court.
- That it is not considered to be an infringement of a trade mark to use terms in a descriptive sense.
The question of trade mark invalidity is usually raised only if a third party is accused of infringement or is interested in using the same or a similar mark for the same or similar goods.
The grounds for a declaration of invalidity mirror the grounds for registration of a trade mark. Namely:
- that a mark is devoid of distinctive character;
- that it consists exclusively of signs or indications which may serve in trade to designate the kind, quality, intended purpose, value, geographical origin, the time of product or goods or of rendering of services or other characteristics of goods or services; or
- that it consists of signs which have become customary in the trade.
Additionally, a trade mark must not consist exclusively of the shape which results for the nature of the goods themselves; the shape which is necessary to obtain a technical result; or the shape which gives value to the goods. Furthermore, a trade mark is invalid if it has been applied for in bad faith.
A trade mark registration may also be declared invalid if it was registered despite there being a prior right. This may either be in the form of a registered or unregistered trade mark.
Finally, a trade mark can be revoked on the grounds that it has not been used for a period of five years following registration. If an application for revocation is filed, the proprietor of a trade mark registration must file a declaration that the mark has been used, including evidence of this use. The use can be minimal but it does have to be genuine.