Coursework

An Introduction to Trademark Infringement

Phillips considers the enforcement mechanisms in the TMA 1994 to be the raison d’etre of trade mark registration i.e. the ability to protect your product from third parties is the only incentive for traders to participate in the trade mark system.

This would seem so given the fact that as we saw the interlinked nature of the interests protected by trade mark law rest on the crux of the self-interest of the trade mark owner. In considering confusion we will have large attention to the European directive and the jurisprudence from the court of justice given its importance to the TMA 1994. The main reason that the European directive is so important is that it marks an expansive move away from the TRIPs version, Directive 89/104 and the CTM Regulation covers not only likelihood of confusion but subsumes likelihood of association under the same heading which is not expressly included in the TRIPs agreement. In understanding the differences that the background justifications make we have to realise that for example confusion isn’t the only test that could be used for example infringement could be measured by financial harm to the trademark holder but as Rothman has stated the fact that customer confusion is the central test in trade mark law in itself should tell us a little about how the law is oriented.

Likelihood of confusion is the lynchpin that holds the statutory infringement actions together with the rather limited situation where the sign complained of is identical to the registered trade mark and appears on identical products, if there are any issues of identity or similarity then likelihood of confusion is the test to be applied . However, statutory concepts have been mutated and we need to understand its common law origins in order to assess the future directions. Passing Off is the tortuous forerunner or ‘the common law form of trade mark law’ and has always been wider than traditional trade mark law. Passing off actions rather than focusing on the individual trade mark are concerned with the damage to goodwill which is in effect a piece of incorporeal property fundamental to the trader or business . The justifications for this action share affinities with the justifications for trade mark law however in other jurisdictions it has been made clear that passing off is not concerned with consumer protection in any way and cannot be premised on such, again any benefits would be indirect however there appears not to be a concerted judicial will to protect consumers. When Lord Diplock laid down the conditions for a passing off action in Spalding & Bros v. AW Gamage Ltd they highlighted the main distinction between passing off and trade mark regulation, the test is trader-centric and has no reference to confusion or any such concept. If a trader wishes to establish a passing off action then he must prove their has been a misrepresentation, made by a trader in the course of trade, to prospective customers/final consumers of a product, calculated to injure business performance or goodwill of other trader and is likely or has done so . The passing off action has no requirement for a trade mark to be registered, is not limited to replication of trade marks but can cover any action that can be perceived as impacting on reputation or goodwill &c…which is aptly described in the ambiguous statement of general ‘get-up’ which is incapable of precise definition. This test is seen as incorporating the likelihood of confusion test but with some sort of additional element. The simple existence of confusion is not enough per se Bainbridge cites HFC Bank plc v. Midland Bank plc in elaboration of this point and argues that what is required is to prove that the claimant has achieved brand name recognition, and not confusion in itself. In reading the case law in the area the considerations seem to be very similar such as distinctiveness of get-up, brand recognition and common field of activity so whether the distinction is tautologous is unclear however arguments must at the very least be framed differently, confusion cannot be the central thrust of the argument although similar considerations may apply as between misrepresentation and confusion.

Moving onto statutory considerations before we consider likelihood of confusion in depth we also ought to be aware of another infringement action which overlaps with that particular action. The idea of comparative advertising may at first be seemingly innocuous that is comparing one product to a competitors for a variety of reasons predominantly though to establish lower prices &c… generally on a global level this isn’t something which is heavily circumscribed but the European Union have produced the Misleading and Comparative Advertising Directive 84/450 which makes specific reference to trademark law and Directive 89/104 but apart from that bears very little comparable jurisprudence. The ECJ has only had to consider it on two occasions so far and given the list of permitted comparative advertising and the open texture of many of the concepts such as ‘same needs’, ‘purpose’ or ‘unfair advantage’ that bear no resemblance to traditional trade mark law concepts. It does include in Art 3A (d) a reference to creation of confusion but it is hard to see why this is necessary given the cover of TMA 1994 and the common law tort of passing off. Phillips suggests, and the UK Judiciary seem to indicate support of this position, in fact interpret this as a distinct area of law rather than part of trade mark law. However it is a close relative and is as well to be aware of it, the justifications that we discussed earlier do not seem to have the same relevance to this either but we will bear it in mind when we move onto discuss the concept of confusion.