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What is an Example of Trademark Infringement under UK Law?

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Brand protection

Trade mark infringement cases come in all shapes and sizes

Being aware of what trade mark infringement looks like can help businesses avoid risk.

Image of a magnifying glass, on a blue background, to express the visual metaphor of examining something

Photo by Markus Winkler on Unsplash

Words by Dr Martin Douglas Hendry

Trade marks are essential to businesses as they distinguish their goods and services from those of competitors. In the UK, a trade mark infringement occurs when a person or company uses a trade mark that is identical or similar to someone else's registered trade mark. This blog will discuss examples of trade mark infringement and remedies under UK law.



Types of Trade Mark Infringement


Confusion with a similar trade mark: This type of infringement occurs when a consumer mistakes one company's product or service for another due to a similar trade mark. The confusion can result from similarities in name, design, or logo.

Dilution of a well-known trade mark: Dilution occurs when a trade mark loses its distinctive character or reputation due to someone else's use of a similar trade mark. This can harm the trade mark owner's reputation and diminish its value.

Passing off: Passing off is when someone falsely represents their goods or services as those of another company. This can occur through the use of a similar trade mark, packaging, or advertising.



Assessed Criteria in Trade Mark Infringement Claims


In the UK, trade mark infringement cases are assessed based on a set of legal criteria that aim to determine whether the use of a trade mark by one party is likely to cause confusion among consumers with the trade mark rights of another party. These criteria are established in the UK Trade Marks Act 1994 and include (but may not be limited to):

Use of an identical or similar mark: A trade mark infringement case in the UK requires the use of an identical or similar mark by another party. This means that the mark used by the alleged infringer should be identical or similar enough to the registered trade mark to cause confusion among consumers.

Use in relation to identical or similar goods or services: In addition to using an identical or similar mark, the alleged infringer should also use it in relation to the same or similar goods or services as those covered by the registered trade mark.

Likelihood of confusion: The use of the identical or similar mark in relation to identical or similar goods or services should be likely to cause confusion among consumers. This means that the consumers are likely to associate the allegedly infringing mark with the registered trade mark and its owner.

Reputation and distinctiveness of the registered mark: The reputation and distinctiveness of the registered trade mark are also important factors in assessing trade mark infringement cases in the UK. A trade mark that is widely known and distinctive is more likely to be protected against infringement.

Intention to deceive or take advantage: If the alleged infringer intentionally used the mark to deceive or take advantage of the reputation of the registered trade mark, this may also be considered as a factor in assessing trade mark infringement.

Overall, trade mark infringement cases in the UK are determined based on the likelihood of confusion among consumers, the similarity of the marks and the goods or services involved, and the reputation and distinctiveness of the registered trade mark.



Remedies for Trade Mark Infringement


Cease and desist orders: A cease and desist order requires the infringing party to stop using the trade mark immediately.

Damages and compensation: The trade mark owner can seek damages and compensation for any harm caused by the infringement.

Injunctions: An injunction can be issued to prevent the infringing party from continuing to use the trade mark.

Criminal prosecution: In some cases, trade mark infringement can result in criminal charges and fines. This tends to be the case where the infringement supports more insidious criminal activity - such as is typical in counterfeiting.



Avoiding Trade mark Infringement


To avoid trade mark infringement, businesses should research and register their trade marks. They should also conduct regular trade mark searches to identify any potential infringements. Finally, businesses should enforce their trade marks by taking legal action when necessary. We have more blogs on these topics, which you can review for additional detail.



Some examples of trade mark infringement cases


Cadbury vs Nestle

In 2013, Cadbury won a legal battle against Nestle over the use of the colour purple on chocolate packaging. Cadbury had registered a certain colour purple as a trade mark in 2004, and Nestle's use of a similar shade of purple on their packaging was deemed an infringement. Nestle argued that the colour was not distinctive enough to be a trade mark, but the court ruled in favour of Cadbury - as its products had developed a strong association with the colour. This case is significant because it established that a colour can be registered as a trade mark if it is distinctive enough to be associated with a specific product or brand. Whilst colour marks are rare and difficult to register - they can offer strong protection over appearance.


Specsavers vs Asda

In 2014, Specsavers won a legal battle against Asda over the use of a similar logo in its advertising for optical services. Specsavers had registered its logo, consisting of two overlapping circles and its name, and Asda's use of a similar overlapping visual was found to be an infringement. Here, Specsaver's had established strong and distinctive reputation around its logo, meaning that a similar graphic constituted infringement.


L'Oreal vs Bellure

In 2010, L'Oreal won a landmark case against Bellure over the use of fragrances which referenced L'Oreal's products. Bellure had used a process to create fragrances that were similar to L'Oreal's but not identical, but in their advertising of the products had referred to L'Oreal's products. The court found that this was an infringement of L'Oreal's trade mark rights, as Bellure's products benefitted from being described as akin to the L'Oreal equivalents. In certain circumstances, within comparative advertising, use of other trade marks is possible. However, it is a very risky approach and often results in a strong pushback from the trade mark owner regardless of validity.




Trade mark infringement is a serious offence under UK law. Businesses should take steps to protect their trade marks and take legal action when necessary. By doing so, they can ensure that their brand is protected and their reputation remains intact.

Ultimately, the best prevention is a proactive approach to develop, register and protect a distinct brand which, itself, stands out in the marketplace. Being close to others only serves to blend you into the crowd - and give rise to a likely dispute down the line.

If you are experiencing a trade mark dispute and need help, contact our team by clicking the button below to learn how we can help you.


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Look at our other guides that relate to this topic here.

Trademark rejected? Here's what to do next

Maximizing your protection: best practices for trademark disputes

The importance of trademark registration in your business



Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide. Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court. In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique. The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.

DISCLAIMER: The content within this post is for educational purposes only and does not constitute legal advice. Virtuoso Legal does not take any responsibility for those that use this information and waives any liability for any resulting effect on your personal or commercial circumstances.

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