It has been long enshrined in trade mark law that a registered trade mark proprietor is protected by law from another entity using their trade mark without their permission (Trade Marks Act 1994 and the Trade Mark Regulation 2018). However, it can be hard for an individual based in the UK to fully understand what trade mark infringement means without understanding the following concepts:
- Trade Dress infringement;
- Trade mark Dilution; and
- Unfair Competition.
Although some of the above concepts base their origins in other jurisdiction, arguably due to the global nature that of trade, these notions help in understanding the commercial implications of trade mark infringement.
Trade Dress Infringement
The term ‘Trade dress’ is an American concept that holds that someone has infringed another’s trade mark rights, if the packaging, the design or a distinctive feature of the design of their goods is very similar to that of another. As a result, this similarity will cause a ‘likelihood of confusion’. It is imperative that the feature of the design or packaging that has been copied, is one that is distinctive in identifying the product. Furthermore, the feature must be non-functional. This means that the feature that is being infringed must not be essential in using the product or important to the purpose of the product/ service or affect its quality. This principle takes into consideration that commercially, the packaging and design of a product is just as important in identifying the origin of the product.
The UK equivalent to Trade Dress Infringement
In UK law, the idea of Trade Dress does not exist. Instead the UK law holds a common law offence of ‘Passing Off’.
Passing Off is a common law tort that allows an individual to enforce their trade marks rights against an entity that has used without permission the ‘get-up’ of another product. The term ‘get-up’ encompasses the external appearance including any markings on the product. This is a common law remedy that can be used to protect both registered and unregistered trade marks. However, the common law remedy of Passing Off does not create any property rights, but instead it seeks to prevent misrepresentation to the public where Seller A, sells goods represented as those of Seller B.
Although Passing Off can be a useful UK remedy, the case of Moroccanoil Israel Ltd v Aldi Stores Ltd  EWHC 1686 (29 May 2014) demonstrates its limitations. Thus, in the UK it is best to register your trade mark and designs in order to enjoy full protection.
Trade Mark Dilution
Trade mark dilution occurs when an unauthorised entity uses a trade mark or a mark that is similar to promote goods/ services in a different market. This means that the trade mark will be associated with other markets e.g. if the Sony trade mark was used to promote clothing, it would no longer be solely associated with electronics- this could affect it commercially, as some consumers may start to associate the brand with clothing and not electronics.
Unfair competition is an umbrella term that can mean various things at different times. However, it generally equates to the use of a trade mark, packaging, name, wrapper or a distinctive article belonging to another’s products without permission, in order to gain some commercial advantage in the market place. In a day and age where marketing is heavily invested in by product makers, unfair competition is something that is claimed more frequently in trade mark disputes.
All in all, different jurisdictions may have different remedies and resolves for trade mark disputes, but they are united in trying to protect the commercial value of trade marks.
By Fatima Amedu