TM Infringement

Action for Infringement

A trademark allows the owner the exclusive use to use the trademark in the country in which it is registered.  Unlike the case with a civil action for passing off,  it is not necessary to establish a reputation or likely loss  Proceedings to restrain unlawful use may not be brought before the publication of registration.

An Irish trademark gives exclusivity only in respect of restricted activities in Ireland. Certain exporting activities may also constitute infringement.

It is an infringement to use an identical sign in the course of a trade on identical goods on in relation to identical services. It is an infringement to use an identical sign or similar sign on similar goods or services and, in some cases, dissimilar goods or services where there is a likelihood of confusion. The criteria for infringement in this context is the same as that applicable to the question of similarity to similarity in respect of trademark registration.

Where the marks are identical, and the goods or services fall within the same category as the registered trademark, infringement is established without showing the likelihood of confusion. Where an identical sign is used in relation to similar goods or where a similar sign is used for identical or similar, infringement is constituted if there is a likelihood of confusion on the part of the public because of the identity or similarity.  Confusion must be produced in the mind of the public.

Use

The use of a sign includes

• attaching it to goods,
• packaging offering or showing goods for sale,
• offering them in the market,
• stocking them for sale
• offering or supplying goods or services under the sign,
• importing or exporting goods under the sign,
• using the sign on business papers and advertisements.

Each of the above may constitute infringement.  The sign need not necessarily appear on the goods themselves. A trade is any business or profession. Use can be through any media. There is a liability for infringement where a person attaches a trademark to materials where he knew or had reason to know that the use was unauthorised.

The criteria in relation to the likelihood of confusion are broadly similar to those set out in relation to objections to registration.  Consideration will be given to the use of the goods, their consumers, the distribution channels and the extent to which they are in competition. The physical similarity of goods will also be relevant.

It is an infringement to use identical or similar signs on similar goods where the registered trademark has a reputation in the State, and the use without good reason takes unfair advantage of or is detrimental to the distinctive character or reputation of the registered trademark.  Where the trademark has an established reputation, the use of an identical or similar mark is an infringement without the need to prove confusion. The similarity must be such as to establish a link in the eyes of the public without confusion.

Comparative Advertising

Comparative advertisement, involving the use of another’s trademarks for the purpose of identifying the goods of the rival trademark holder, is permitted subject to conditions.  The use must be an honest practice in industrial and commercial matters. It must not take unfair advantage or be detrimental to the distinctive character or reputation of the rival’s trademark.

The Directive on Unfair Advertising and the Regulations made to implement it require that it must not be misleading, must compare like goods, and must objectively compare goods with reference to objectively relevant and verifiable features of those goods, which may include price.

It must not disparage or discredit the trademarks and names of others.  Competitors must not take unfair advantage of the reputation of the trademark, name or mark. They must not cause confusion between the advertiser and the competitor.

Damages & Account of Profits

As with other intellectual property rights, there is a range of legal actions available to restrain the infringement of trade mark rights.  The owner of the trademark or a licensee may take action for infringement. The action may seek damages, an account of profit or an injunction.

Damages seek to put the owner of the trademark in the position in which he would have been, but for the infringement. The measure of damages may be in terms of loss of sales or notional lost royalties.  Under the Enforcement of Intellectual Property Rights Regulation, an order may be made for the expenses of publication of the court order regarding infringement.

An alternative remedy to damages is an account of profits.  An account of profits is intended to disgorge the unfair advantage obtained by the infringement.

Orders

An injunction may be granted to restrain infringement.  At the pre-trial stage, the test for the issue of injunction is whether there is a bona fide question for trial and whether the failure to grant may cause irreparable damage.  After a full trial of the matter, a permanent injunction may issue to restrain infringement.

Pre-trial orders allowing persons to enter premises in order to search and inspect may be granted.  Defendants may be ordered to disclose details of their manufacturers and suppliers.

Where infringement has been found, an order may be made requiring that signs be removed from the infringement goods.  If this is not reasonably practicable, the goods may be ordered to be destroyed.  In the event of non-compliance or where non-compliance is likely, the goods may be ordered to be delivered to the claimant.

There is power for the court to grant an order for the delivery of infringing goods and articles.  The person in whose custody they may be held need not be guilty of infringement.  The order may be made against anyone in the chain of distribution.  Where the order is made for the delivery of the goods, the court may also order their destruction or forfeiture.

Whether such orders will be made will depend on the adequacy of other remedies, including compensation and other steps which might be taken to protect the reputation of the trademark owner.

When goods have been delivered, persons with an interest in the goods may be notified, and they may be entitled to against the orders for destruction and forfeiture.  Orders may also be made in relation to equipment which is designed to make copies of the trade mark. This may include prints, negatives, and marks, where they are in possession of a person who knows or has a reason to believe they are being used for the purpose of infringement.

Seizure by Authorities

An application may be made to the District Court for an order authorising Garda Siochana to seize infringing material.  The goods are brought before the court, which can order delivery destruction or forfeiture of the goods. 2006 Regulations allow for a wide range of remedies, including orders to recall infringing goods from distributors and retailers.

Evidence may be submitted to the customs authorities of infringing trademarks.  The application may be made to one State or to a number of EU States.  The Revenue Commissioners will require an indemnity in relation to actions taken by them. It is an offence to enter infringing goods in the EU under customs procedures.

Criminal Offences

It is an offence to apply, sell, hire, offer or expose for sale or hire or distribute goods which bear an infringing trademark or materials bearing such a mark intended for the labelling, packaging, or advertising.  The offence applies to identical marks of marks which closely resemble the registered trademark.

It is an offence to use material bearing an infringing mark in the course of business for labelling, packaging or advertising goods.  It is an offence to possess goods with a view to carrying out any of the offences or to assist a third party in doing so where there is knowledge or reason to believe that the third party has no entitlement to use the mark.

There is a defence to show reasonable grounds of belief that there is an entitlement to use the mark.

The offence is constituted when a person acts for the purpose of gain or with the purpose of causing loss to the other. It is an offence to falsely represent that a trademark is registered, knowing or having a reason to believe that this is false. This might occur where a symbol implying registration is used.  It is not an offence if the goods are, in fact, registered outside the state.

Where an offence is committed by a company or partnership, directors, managers, secretaries and other officers who consent to or connive or whose neglect causes the offence may be prosecuted and convicted in the same way as the principals.

There are provisions designed to prevent persons from making unfounded threats based on alleged trademark rights.  An injunction may be issued to order the threats to cease.  Damages may be avoided if the loss is caused as a result of groundless threats. The threat must be communicated to the addressee.  It must threaten action to the recipient.

Groundless Threats

Where a person threatens another with proceedings for infringement of a registered trade mark other than in relation to the application of the mark to goods or the importation of goods to which the mark has been applied, any person aggrieved may apply to the Court appropriate court for relief. The relief  may be any of the following:

• a declaration that the threats are unjustifiable;
• an injunction against the continuance of the threats;
• damages in respect of any loss sustained by the threats.

A plaintiff shall be entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or, if done, would constitute) an infringement of the registered trade mark concerned. The plaintiff shall be entitled to such relief) if the plaintiff shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.

Notification that a trade mark is registered or that an application for registration has been made shall not of itself constitute a threat of proceedings for the purposes of this provision.