Trademark infringement is a key aspect of intellectual property law. It happens when a trademark that is identical or very similar to a registered trademark is used in connection with products or services that are identical or similar to those covered by the registration.
An overview of trademark infringement
The Trade Marks Act 1994 in the UK provides the legal framework for trademark infringement.
According to the Act, infringement can occur when an identical or similar mark is used in a way that could cause confusion among the public. This confusion could be due to an association with the registered trademark.
If the registered trademark is well-known, it could be infringed by the use of a similar or identical mark that unfairly takes advantage of or is harmful to the distinctive character or reputation of the registered trademark.
The Act outlines three ways a trademark can be infringed:
- Same mark, same goods or services: This is when someone uses the exact same trademark for the same type of goods or services. This is a straightforward infringement
- Same or similar mark, same or similar goods or services, causing confusion: This happens when a similar trademark is used for similar goods or services, and it could confuse people
- Same or similar mark, any goods or services, unfair use or harm: This occurs when a similar trademark is used in a way that could unfairly benefit from or harm the reputation of the registered trademark, regardless of the type of goods or services
Nestle SA v Cadbury UK Ltd 2022
The 2022 case between Nestle and Cadbury offers a real-world example of how trademark infringement disputes can develop.
Cadbury attempted to register a specific shade of purple (Pantone 2685C) as a trademark for chocolate. Nestle challenged the registration, arguing that the marks did not meet the requirements of a sign, an important part of the definition of a trademark.
The UK Intellectual Property Office (UKIPO) initially turned down two of Cadbury’s three applications, stating they were ambiguous.
However, on appeal, one of these rejections was reversed, and the registration was upheld.
This case highlights the challenges involved in registering non-traditional trademarks, such as colours and the potential for disputes in this area.
Considerations for businesses
Trademark infringement can have important implications for businesses. The Nestle vs Cadbury case illustrates the complexities of this area of law, especially with non-traditional marks like colours.
It also highlights the importance of clear and precise applications when trying to register such marks and the potential for disputes when the requirements for registration are not met.
Given the complexities of trademark infringement as shown in the Nestle vs Cadbury case, it is important for businesses to take steps to protect their intellectual property.
If you would like further information and advice on steps to protect your trademark, please contact us today.