United Kingdom Trade Mark Law - Conferred Rights

Conferred Rights

The owner of a trademark cannot legally defend his mark against infringements. In order to do so, the trademark must either be registered, or have been used for a period of time so that it has acquired local distinctiveness (Prior Rights).

The extent to which a trademark is defendable depends upon the similarity of the marks involved, the similarity of the products/services involved and whether the trademark has acquired distinctiveness.

A registered trademark is relatively simple to defend in a court of law. An unregistered mark relies on the law of passing off (where one party's goods or services are presented in a way that causes confusion between them and the goods or services of another party).

Rights have also been recently extended with regard to well-known marks.

The Trade Marks Act 1994 states that "a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered" (section 10(1) of the Act). A person may also infringe a registered trade mark where the sign is similar and the goods or services are similar to those for which the mark is registered and there is a likelihood of confusion on the part of the public as a result (section 10(2)).

A person also infringes a registered trade mark where a sign is identical but the goods are dissimilar if the trade mark has a reputation in the UK and its use takes unfair advantage of, or is detrimental to, the mark’s distinctive character or reputation (section 10(3)).