Trademark infringement


Trademark infringement

Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party which infringes its registration.

In many countries, but not in the United States, which recognizes common law trademark rights, a trademark which is not registered cannot be "infringed" as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner may be able to commence proceedings under the common law for passing off or misrepresentation, or under legislation which prohibits unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable.

Where the respective marks or products or services are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner.

Likelihood of confusion is not necessarily measured by actual consumer confusion, though normally one of the elements, but by a series of criteria Courts have established. A prime example is the test announced by the Ninth Circuit Court of Appeals in "AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979". The Court there announced eight specific elements to measure likelihood of confusion:
# Strength of the mark
# Proximity of the goods
# Similarity of the marks
# Evidence of actual confusion
# Marketing channels used
# Type of goods and the degree of care likely to be exercised by the purchaser
# Defendant's intent in selecting the mark
# Likelihood of expansion of the product lines [ [http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/amf.htm AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979] ]

Other Courts have fashioned their own tests for likelihood of confusion -- like those announced in "In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)," known collectively as the "DuPont" factors.

If the respective marks and products or services are entirely dissimilar, trademark infringement may still be established if the registered mark is well known pursuant to the Paris Convention. In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution.

In some jurisdictions a party other than the owner (eg. a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.

The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid "exception" (e.g. comparative advertising) or "defence" (e.g. laches) to infringement, or attack and cancel the underlying registration (eg. for non-use) upon which the proceedings are based.

References

ee also

*Exhaustion of rights
*Passing off
*Trade dress

External links

* [http://www.highbeam.com/doc/1G1-56223451.html Pfizer Inc. Must Pay $143 Million to Trovan Ltd. in Largest Trademark Judgement Ever Awarded in the United States]
* [http://www.uspto.gov/web/offices/tac/tmlaw2.html#_Toc52344333 Section 43(a) of the Lanham Act (15 U.S.C. 1125(a))]
* [http://www.ipo.gov.uk/tm/t-decisionmaking/t-law/t-law-legislation.htm The Trade Mark Act (UK)]
* [http://tcattorney.typepad.com/ip/ Trademark infringement FAQ Blog]
* Canadian Trademark Law [http://www.crollco.com/FAQs.php FAQ]


Wikimedia Foundation. 2010.

Look at other dictionaries:

  • trademark infringement — See infringement of trade mark …   Ballentine's law dictionary

  • trademark infringement — noun : an appropriation or imitation that is likely to deceive ordinary or unwary buyers into accepting the goods of one trader as those of another compare unfair competition …   Useful english dictionary

  • infringement — in·fringe·ment n: the act or an instance of infringing; esp: the unauthorized use of copyrighted or patented material or of a trademark, trade name, or trade dress see also equivalent, fair use ◇ Infringement of a trademark, trade name, or trade… …   Law dictionary

  • Trademark distinctiveness — is an important concept in the law governing trademarks and service marks. A trademark may be eligible for registration, or registrable, if amongst other things it performs the essential trademark function, and has distinctive character.… …   Wikipedia

  • Infringement — Infringement, when used alone, has several possible meanings in the English language. In a legal context, an infringement refers to the violation of a law or a right. This includes intellectual property infringements such as: *copyright… …   Wikipedia

  • Trademark — For other uses, see Trademark (disambiguation). For guidelines on using trademarks within Wikipedia, see Wikipedia:Manual of Style (trademarks). Intellectual property law …   Wikipedia

  • Trademark dilution — Intellectual property law Primary rights Copyright · authors rights  …   Wikipedia

  • trademark — A distinctive name or symbol used to identify a product or company and build recognition. Trademarks may be registered with the US Patent and Trademark Office. Bloomberg Financial Dictionary * * * trademark trade mark [ˈtreɪdmɑːk ǁ mɑːrk]… …   Financial and business terms

  • infringement — infringe in‧fringe [ɪnˈfrɪndʒ] also infringe on verb [transitive] to do something that is against a law or someone s legal rights: • There was no evidence that Apple s work was infringing Xerox copyrights. • We ll be watching closely to see… …   Financial and business terms

  • infringement —    The improper use of a patent (i.e., protected invention) or creative work (written, graphic or musical) that is protected by copyright or trademark without permission or notice, and without agreeing to a contract involving the payment of a… …   Business law dictionary


Share the article and excerpts

Direct link
Do a right-click on the link above
and select “Copy Link”

We are using cookies for the best presentation of our site. Continuing to use this site, you agree with this.