Trademark infringement
Encyclopedia
Trademark infringement is a violation of the exclusive right
s 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:
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 (e.g. 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 (e.g. for non-use) upon which the proceedings are based.
Exclusive right
In Anglo-Saxon law, an exclusive right is a de facto, non-tangible prerogative existing in law to perform an action or acquire a benefit and to permit or deny others the right to perform the same action or to acquire the same benefit. A "prerogative" is in effect an exclusive right...
s attaching to a trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
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
Confusing similarity
In trademark law, confusing similarity is a test used during the examination process to determine whether a trademark conflicts with another, earlier mark, and also in trademark infringement proceedings to determine whether the use of a mark infringes a registered trade mark.In many jurisdictions...
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
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
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
Passing off
Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill....
or misrepresentation
Misrepresentation
Misrepresentation is a contract law concept. It means a false statement of fact made by one party to another party, which has the effect of inducing that party into the contract. For example, under certain circumstances, false statements or promises made by a seller of goods regarding the quality...
, or under legislation which prohibits unfair business practices
Unfair business practices
Unfair business practices encompass fraud, misrepresentation, and oppressive or unconscionable acts or practices by business, often against consumers and are prohibited by law in many countries. For instance, in the European Union, each member state must regulate unfair business practices in...
. In some jurisdictions, infringement of trade dress
Trade dress
Trade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers...
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
United States Court of Appeals for the Ninth Circuit
The United States Court of Appeals for the Ninth Circuit is a U.S. federal court with appellate jurisdiction over the district courts in the following districts:* District of Alaska* District of Arizona...
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
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
United States trademark law
Trademarks were traditionally protected in the United States only under State common law, growing out of the tort of unfair competition. As early as 1791, Thomas Jefferson proposed that the marks of sailcloth makers could be protected under the Commerce Clause, but it was not until 1870 that...
.
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
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property...
. In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution
Trademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
.
In some jurisdictions a party other than the owner (e.g. 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
Laches (equity)
Laches is an "unreasonable delay pursuing a right or claim...in a way that prejudices the [opposing] party" When asserted in litigation, it is an equitable defense, or doctrine...
) to infringement, or attack and cancel the underlying registration (e.g. for non-use) upon which the proceedings are based.
Notable cases
- Facebook, Inc. v. Power Ventures, Inc.Facebook, Inc. v. Power Ventures, Inc.Facebook, Inc. v. Power Ventures, Inc. is a lawsuit brought by Facebook in the United States District Court for the Northern District of California alleging that , a third-party platform, collected user information from Facebook and displayed it on their own website...
, case still pending. - Google, Inc. v. American Blind & Wallpaper Factory, Inc.Google, Inc. v. American Blind & Wallpaper Factory, Inc.Google, Inc. v. American Blind and Wallpaper Factory, Inc., No. 03-cv-05340 JF , was a decision of the United States District Court for the Northern District of California that challenged the legality of Google's AdWords program...
, in which Google's AdWords program was alleged to be in violation of trademark. - Rescuecom Corp. v. Google Inc.Rescuecom Corp. v. Google Inc.Rescuecom Corp. v. Google Inc. 562 F.3d 123 , was a United States Court of Appeals for the Second Circuit case in which the court held that recommending a trademark for keyword advertising was a commercial use of the trademark, and could constitute trademark infringement...
, in which the use of trademarks in Google's AdWords program was found to be a "use in commerce" under the Lanham Act. - Network Automation, Inc. v. Advanced Systems Concepts, Inc.Network Automation, Inc. v. Advanced Systems Concepts, Inc.Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 was a court case decided on March 8, 2011, where the United States Court of Appeals for the Ninth Circuit ruled that the use of a competitor's trademark as an Internet search advertising keyword did not constitute trademark...
, in which the use of a competitor's trademark as an Internet advertisement search keyword was found to be not constitute trademark infringement.
See also
- Madrid Protocol
- Canadian trade-mark lawCanadian trade-mark lawCanadian trade-mark law provides protection to marks statutorily under the Canadian Trade-marks Act and also at common law. Trade-mark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark...
- Exhaustion of rights
- Passing offPassing offPassing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill....
- Trade dressTrade dressTrade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers...
- Trademark Counterfeiting Act of 1984Trademark Counterfeiting Act of 1984The Trademark Counterfeiting Act of 1984 is a United States federal law that amended the federal criminal code to make it a federal offense to violate the Lanham Act by the intentional use of a counterfeit trademark or the unauthorized use of a counterfeit trademark...
External links
- World Intellectual Property Organization
- Madrid Protocol Text of Treaty
- Pfizer Inc. Must Pay $143 Million to Trovan Ltd. in Largest Trademark Judgement Ever Awarded in the United States
- Section 43(a) of the Lanham Act (15 U.S.C. 1125(a))
- The Trade Mark Act (UK)
- Trademark infringement FAQ Blog
- Study of Alleged Trademark Infringement Against Global Brands in Internet Search Advertising