Intellectual Property in Commercial Settings
What is trade mark infringement?
Trade mark law provides that it is an infringement of a trade mark owner’s rights to use a mark that is substantially identical with or deceptively similar to the registered trade mark in relation to the same goods or services or closely related goods or services.
Definitions
Substantially identical: This means that when compared side-by-side, the infringing mark is similar in virtually every detail to the registered mark.
Deceptively similar: This means the infringing mark resembles the registered trade mark in a way that is likely to cause confusion in the minds of consumers. For this assessment, the marks are not compared side-by-side. Rather, the court will consider the likely impact on the memory of consumers, considering that most people have imperfect memories. The two marks therefore do not need to be identical, but just similar enough that consumers are likely to get mixed up about which mark is which. All aspects of the marks will be relevant, including the colours used in the marks, and whether the marks sound the same phonetically even if they do not look the same when written.
Is this an infringment?
Well-known marks
There is also a special category of infringement that applies only to well-known marks. It is an infringement for a person to use a mark that is substantially identical or a deceptively similar mark to a well-known trade mark, irrespective of the class of registration. In other words, the use may be an infringement even where the mark is used for unrelated goods or services.
Whether a trade mark is well known is assessed on various factors, including the extent to which members of the public would easily and immediately recognise the mark. Since an infringement under this category prohibits use of a mark even in an unrelated class of goods or service, the burden to prove that a mark is well-known is on the owner of the registered trade mark. Claims under this category of infringement are rare as the burden is quite heavy.