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Infringement of well known trade marks


Lawdit Solicitors - Expert Author

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Marks which have built up a particular reputation in the market may be able to call on a wider basis for infringement than other less know marks can. The basis of this is that such marks enjoy such a high level of recognition among consumers that use of a similar sign on any goods and services is likely to suggest some connection with the mark. Consequently given the functions of a trade mark for example as an indicator of origin, focus of goodwill and guarantee of quality, it is argued that such marks need greater protection. An example of such a mark is Coca Cola, besides being a leading soft drink, it is also used in numerous merchandising ways. Therefore if anyone was to use a similar sign to this there is a danger that consumers may believe that the products to which the sign is affixed are associated with the Coca Cola brand. If these products are found to be of a lesser quality than expected, this could have a negative impact on the Coca Cola brand as a whole. If this practice is allowed to go unchecked the goodwill invested Coca Cola brand will gradually be diluted, thus losing value and possibly its capacity to function as an indicator of origin.

There are four main elements which should be borne in mind when considering if this basis is applicable:

  • Are the mark and the sign identical or similar
  • Does the mark have a reputation
  • Is sign being used without due cause.
  • Does the sign take unfair advantage of reputation or is it detrimental to the distinctive character or reputation of the mark

This basis is essentially available regardless of the goods or services involved as unlike other grounds for infringement there is no limitation as to the type of goods or services concerned.

Unlike section the ground which deals with similar trade marks on the basis of likelihood of confusion there is no requirement to show that there is a likelihood that the alleged infringing mark will be confused with the owner’s mark. However it is recognised that a lesser requirement is applicable; the degree of similarity required under this ground must be such that the relevant consumers establish a link between the mark and the sign; although the mere fact that the sign reminds consumers of the mark will not be sufficient to satisfy this as this would negate the requirement to prove unfair advantage or detriment. The assessment of this should again be appreciated taking into account the overall impression given by the marks.

About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2007-07-20 22:20:21 in Legal Articles

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