John Lambert
3 March
2004
This
article first appeared on the NIPCLAW website
Under s.9 (1) of the Trade Marks Act 1994 ("TMA") and art 9 (1) of the Community Trade Mark Regulation ("CTMR"), registration of a sign as a registered or Community trade mark confers exclusive rights in the mark on the registered proprietor.
Meaning of
Infringement
Within certain exceptions, the mark is "infringed" if anyone other
than that proprietor does any of the following tings within the UK or,
as the case may be, the EC without that proprietor's consent:
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using in the course of trade a sign that is identical with the registered trade mark in relation to goods or services which are identical with those for which it is registered (s. 10 (1) of the TMA or art 9 (1) (a) of the CTMR); |
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using in the course of trade a sign where because the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark(s.10 (2) TMA or art 9 (1) (b) CTMR), or |
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using in the course of trade a sign which is identical with or similar to the registered trade mar and is used in relation to goods or services that are not similar to those for which the trade mark is registered where the trade mark has a reputation in the UK, or, as the case may be, the EC, and the use of such sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the registered trade mark (s.10 (3) TMA or art 9 (1) (c) CTMR). |
"Use"
"Use", for these
purposes, includes affixing the sign to goods or their packaging,
offering or exposing goods for sale, putting them on the market or
stocking them for those purposes under the sign, or offering or
supplying services under the sign, importing or exporting goods under
the sign or using the sign on business papers or in advertising.
Exceptions
The exceptions to these exclusive rights are as follows:
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use of another registered trade mark in relation to goods or services for which it is registered; |
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comparative advertising and other references to the proprietor of a registered mark (the use of a registered trade mark for the purpose of identifying goods or services as those of the proprietor or a licensee provided that it is in accordance with honest practices in industrial or commercial matters and does not without due cause take unfair advantage of, and is not detrimental to, the distinctive character or repute of the registered trade mark). |
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use by a person of his own name or address ,in accordance with such honest practices; |
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use in accordance with such practices of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, |
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indicating the intended purpose of a product or service (in particular, as accessories or spare parts) provided that it in accordance with the same honest practices; and |
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use of an earlier unregistered trade mark or other sign in the course of trade within a particular locality. |
There may be a
number of other defences such as "exhaustion of rights" which can arise
where goods are first marketed elsewhere in the EC with the proprietor's
consent.
Professional Advice
Intellectual property proceedings differ from other litigation in a
number of ways. For a start, there are a number of traps. A letter
asking for an undertaking to stop selling goods in particular packaging
on the grounds that they infringe a trade mark with a warning of
litigation if the request is refused which would be quite
unobjectionable were it a request for an undertaking to desist from
almost any other wrongdoing may be actionable as a groundless threat
under s.21 of the TMA. Secondly, there are also special judges who
manage cases in accordance with special rules and practice directions
for some intellectual property cases but not for others. For these and
other reasons, professional advice is particularly strongly recommended
for trade mark infringement claims.
However, because of
pitfalls of the kind just described, advice of any value has to come
from a specialist. Very few solicitors have much experience of
intellectual property litigation and they are nearly all in London. The
first reaction of a solicitor who is not himself a specialist is to
consult counsel but even that may give rise to difficulty if the
barrister is not himself a specialist. A common law or even general
chancery or commercial practitioner advising a non-specialist litigator
is a case of the blind leading the blind. Both legal representatives are
on a learning curve for which their client usually has to pay in one
form or another. Most intellectual property specialists (including
members of these chambers) are members of the Intellectual Property Bar
Association.
Ideally, the litigator should also be a specialist. One option is to
instruct a patent attorney who is authorized to conduct litigation.
There are now a number of them and their
names and firms may be
downloaded from the CIPA website. However, while such patent attorneys
may be suitable for cases that involve intellectual property and nothing
else, it is often the case that intellectual property is just one issue
among several. For those cases, the better option is to instruct a law
firm with expertise in intellectual property among a number of areas.
Many firms specializing in intellectual property litigation belong to
the Intellectual Property Lawyers Association ("IPLA"). The
problem for litigants in the North is that nearly all its member firms
are in London.
Until recently, counsel could be approached only through a solicitor or patent attorney but barristers are now entitled to seek accreditation for accepting instructions directly from the public ("public access"). Those who live outside the UK have always been allowed to consult barristers directly in non-contentious matters. An enormous advantage of instructing counsel first is that a specialist barrister can indicate the services required and identify who is most likely to supply them thereby saving a great deal of time and cost.
Funding
It is because enforcement can be expensive that taking intellectual
property insurance as early as possible has been strongly recommended.
Even where such cover is not obtained it may still be possible to obtain
some kind after the event insurance. Understandably, such cover is
available only for strong cases and the premiums are fairly high.
Counsel and solicitors are occasionally willing to enter a conditional
fee agreement but it is still necessary to insure against the other
side's costs. As Community Legal Service funding is not available for
most intellectual property litigation the only other option is advice or
representation from the
Bar Pro Bono Unit.
Courts
Infringement cases are allotted to the Chancery Division or the chancery
county courts. Claim forms can be issued out of Chancery Chambers at the
Royal Courts of Justice, the Manchester, Leeds, Liverpool, Newcastle,
Birmingham, Bristol or Cardiff district registries or their associated
county courts.
Search Orders
In a very small number of exceptional cases there may be a danger that
an infringer would remove, hide or destroy documents or material that
could prove his liability were he to be warned of proceedings against
him. To prevent that from happening the court occasionally makes an
order before any proceedings are served (known as a "search order")
requiring a suspected infringer to admit to his premises a team of
solicitors representing the intellectual property proprietor, under the
supervision of another solicitor who is independent of the parties
called "the supervising solicitor", and allow them to search his
premises for specified documents or materials.
Such an order usually requires any such materials as may be found to be copied and for the supervising solicitor to report to the court on the progress of the search at a hearing fixed at the earliest possible opportunity after the search should have been carried out known as "the return day". Applications for search orders have to be made on affidavit which are attested by a commissioner of oaths rather than simple witness statements. The applicant has to show exceptional circumstances to justify what would normally be an incursion of the suspected infringer's property and human rights. Precautions have to be taken to prevent oppression and embarrassment. For instance, if a woman is likely to be on the premises to be searched a member of the search team should be female. The search can only be carried out during normal business hours on working days.
Orders of this kind,
formerly known as Anton Piller orders, used to be quite common.
They are now made much less frequently, partly because they are
expensive, partly because judges are more sceptical than they used to
be, and partly because in a digital age there is less need for them.
Freezing Injunctions
Another risk that occasionally arises in piracy and counterfeiting cases
is concealment, disposal or removal from the jurisdiction of the English
courts of funds or other assets to defeat judgment. To prevent that from
happening, the courts will occasionally order before proceedings are
served a suspected infringer, his bankers and others with charge of his
property not to move or use those assets until after judgment or some
other specified date. Such an order is now known as a "freezing
injunction" and was formerly called a "Mareva" injunction. As
with search orders, the circumstances in which freezing injunctions are
made are exceptional. The court has to be satisfied that there is a real
danger of the removal or dissipation of assets and that adequate
safeguards are in place to enable the respondent to draw his normal
living expenses, carry on legitimate business and pay his lawyers.
Applications have to be supported by affidavit evidence and provision is
made for the court to review the order as soon as possible after it
should have been carried out. Again, like search orders, freezing
injunctions are now issued much less frequently than they used to be
largely because of the expense of preparation and partly because of
judicial scepticism.
Other Interim
Orders
In addition to search orders and freezing injunctions, the courts have
powers to make a number of orders between the issue of proceedings and
the trial of an action to facilitate the execution of justice. Most of
these are listed in CPR 25.1. Probably those that are sought most
frequently are interim injunctions and orders for delivery up of
infringing matter or disclosure of documents before a claim is made.
There was a time when applications for interim injunctions were almost
routine in intellectual property cases. They were sought because it
could take months or even years for an action to come on for trial
during which time the piracy, counterfeiting or other wrongdoing could
continue. While an interim injunction could put a stop to one kind of
injustice it often gave rise to another. The order could paralyse the
respondent's business and that the costs of resisting or discharging it
were often prohibitive.
Theoretically respondents could look to the applicants' cross-undertaking as to damages if they could prove that the order should never have been made but an inquiry would only come after trial which few respondents could afford. Consequently, intellectual property owners tended to seek interim injunctions even when they were not strictly necessary in order to force concessions. Shorter waiting times have reduced the need for interim relief. As a claim can often come on for trial in the Chancery Division almost as quickly as an application by order there is rarely any point in seeking an interim injunction. Moreover, as the unsuccessful party usually has to pay the costs of the application immediately there is a powerful disincentive against. Interim relief is now sought only where there is a very strong claim and obvious risks in delay.
Criminal Offences
In addition or perhaps as an alternative to infringement proceedings it
is often worth notifying local trading standards officers of suspected
trade mark infringements. Local weights and measures authorities have a
statutory duty to enforce s.92 of the TMA, which establishes a number of
offences in relation to what is popularly referred to as
"counterfeiting", and reg 6 of
The Community Trade Marks
Regulations 1996.
Further information can be obtained from the
Manchester Trading Standards
and the
Trading Standards Central
websites.
Defences
In addition to the exceptions set out above a defendant can challenge
the validity of the registration. The grounds upon which challenge can
be mounted are considered on the
"Challenging a Trade Mark" page. If a claim is made under
s.10 (1) (a) or art 9 (1) (a) argument usually turns on whether the
allegedly infringing sign is identical to the registered mark. If under
s.10 (2) or art 9 (1) (b), argument focuses on whether there really is a
likelihood of confusion. If the claim is under s.10 (3) or art 9 (1) (c)
it is usually over whether unfair advantage has been taken of, or
detriment to, the distinctive character or repute of the registered
mark.
Remedies
S.14 (2) of the TMA provides that a proprietor whose trade mark is
infringed is entitled to the same relief as is available in respect of
the infringement of any other property right. These remedies include
injunctions, damages, accounts of profits and orders for delivery up of
infringing goods. The usual practice is for a trial to determine whether
a trade mark is infringed. If it has, a further hearing takes place to
determine either the amount of damages due to the proprietor by way of
compensation (which is known as an "inquiry as to damages") or the
profit that the infringer derived from the infringement for which he has
to account as though he were the proprietor's agent (known as an
"account of profits"). It is not possible to claim both damages and
profits. The remedies for infringing a Community trade mark are the same
as for infringement of a national trade mark.
Important
Articles
John
Lambert The Trade Marks Act 1994
John Lambert The Trade
Marks Rules 2000
3 May 2000
John Lambert Community
Trade Marks
9 April 2003
