Infringement of Trade Marks: Enforcing Your Rights

5 Sept

Introduction

Registering a trade mark is only the first step. Once registered, the proprietor enjoys the exclusive right to use the mark in relation to the goods and services for which it is registered (s9, Trade Marks Act 1994 (“TMA 1994”)). Unauthorised use by third parties can amount to infringement, and the TMA sets out a structured framework for identifying when infringement has occurred.

Section 10 of the Act defines three main types of infringement. These largely mirror the relative grounds of refusal under section 5, but they apply after registration and are enforceable by the proprietor.

Infringement under Section 10(1)

This is the strictest form of infringement. It applies where:

a sign used by a third party is identical to the registered trade mark;
it is used in the course of trade; and
it is used in relation to identical goods or services.

Here, no likelihood of confusion needs to be shown: the mere use of an identical sign for identical goods/services will suffice.

In LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799, the CJEU held that “identical” means the sign reproduces, without modification or addition, all the elements constituting the trade mark. Even minor differences will not prevent infringement under s10(1) if they are negligible.

Infringement under Section 10(2)

This provision captures situations where:

a sign is identical or similar to a registered mark;
it is used in the course of trade;
it is used in relation to identical or similar goods/services; and
there exists a likelihood of confusion on the part of the public, including the likelihood of association.

The test is multi-factorial, considering visual, aural, and conceptual similarities, the average consumer’s perception, and the distinctiveness of the earlier mark.

In Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, the Court of Appeal held that Asda’s use of a green logo was likely to cause confusion with Specsavers’ well-known logo, even though the word “Specsavers” was not always present. The case highlighted that overall impression, rather than side-by-side comparison, governs the analysis.

Infringement under Section 10(3)

This provision protects trade marks with a reputation in the UK, even where the goods or services are dissimilar. It applies where:

a sign is identical or similar to a registered mark;
the mark enjoys a reputation; and
use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.

This covers dilution (eroding the distinctiveness of a mark) and tarnishment (harming its reputation).

In L’Oréal SA v Bellure NV [2009] EWCA Civ 1028, the defendants marketed “smell-alike” perfumes. Although consumers were not confused, the Court of Justice found that Bellure took unfair advantage of L’Oréal’s reputation by riding on the coat-tails of its branding. This confirmed that unfair advantage can be infringement even absent confusion.

Defences to Infringement

The TMA balances brand protection with fair commercial practices. Under section 11 and related provisions, certain defences may be available:

Own name or address (s11(2)(a)): individuals (but not companies) may use their own name honestly in trade.

Descriptive use (s11(2)(b)): traders may use terms that describe characteristics of goods/services (e.g. “organic”, “fast-drying”) if used fairly.

Indicating purpose (s11(2)(c)): references to compatibility (e.g. “compatible with Apple”) are permitted if not misleading.

Earlier rights (s11(3)): prior use of a similar sign may provide protection.

Acquiescence (s48): if a proprietor tolerates use of a conflicting sign for five years, they may lose the right to challenge it.

Exhaustion of rights (s12): once goods are placed on the UK market by the proprietor, resale cannot usually be blocked unless legitimate reasons exist.

Conclusion

Trade mark registration is a powerful tool—but its true value lies in the ability to enforce it. Section 10 of the TMA 1994 provides a robust framework for proprietors to challenge unauthorised use, ranging from identical sign cases through to dilution of famous brands.

For businesses, understanding the scope of infringement and available defences is essential to both protect their own marks and avoid costly disputes with others. Whether launching a new venture or managing an established brand portfolio, early legal advice and proactive enforcement strategies are key.

Our firm regularly advises clients on brand clearance, enforcement actions, oppositions, and litigation. If you would like tailored advice on protecting your brand, please get in touch.

This article is intended for information purposes only and provides a general overview of the relevant legal topic. It does not constitute legal advice and should not be relied upon as such. While we strive for accuracy, the law is subject to change, and we cannot guarantee that the information is current or applicable to specific circumstances. Costigan King accepts no liability for any reliance placed on this material. For further details concerning the subject of the article or for specific advice, please contact a member of our team.