What is trade mark infringement?

Trade mark infringement is a legal issue that arises when a business or individual uses a sign, logo, word, phrase or design that is identical or confusingly similar to a registered trade mark owned by another party, without permission.

This unauthorised use can cause confusion among consumers, dilute a brand’s distinctiveness, and potentially damage the reputation or commercial interests of the trade mark holder.

At Moore Barlow, we understand the significant commercial value of intellectual property. Your brand is more than just a logo — it represents your business identity, values and reputation. Protecting your trade mark is therefore crucial in maintaining your competitive edge in the marketplace.

Understanding trade marks

A trade mark, whether registered or unregistered, serves as a badge of origin, allowing consumers to distinguish your goods or services from those of competitors. Registered trade marks provide legal rights and protections under the Trade Marks Act 1994 in the UK.

These marks can include words, logos, colours, shapes or combinations thereof. By registering a trade mark, you gain exclusive rights to use it in relation to specified goods or services. This registration offers the legal backing to take action in cases of misuse or infringement by others.

What constitutes trade mark infringement?

Trade mark infringement typically occurs when someone uses a mark that is identical or similar to a registered trade mark, in relation to identical or similar goods or services, and this use creates a likelihood of confusion in the minds of the public.

Infringement can also occur even if the infringing party did not intend to deceive or cause confusion. The key factor is whether an average consumer is likely to be misled into believing there is an association between the infringing party and the original trade mark owner.

Examples of trade mark infringement may include:

• Using a similar business name that confuses customers
• Copying a logo or design that resembles an established brand
• Selling counterfeit goods bearing a registered mark
• Using a competitor’s trade mark in advertising that misleads consumers

Types of trade mark infringement

There are different types of trade mark infringement, which include:

Direct infringement

This occurs when someone uses a mark that is identical or nearly identical to a registered trade mark for the same or similar goods or services. For example, selling shoes under a name and logo that is confusingly similar to a well-known sportswear brand may amount to direct infringement.

Indirect infringement

Also known as contributory infringement, this applies to parties who facilitate or enable trade mark infringement, even if they are not directly using the trade mark themselves. For instance, a marketplace or distributor may be liable if they knew or should have known they were distributing infringing goods.

Dilution

This arises when the use of a trade mark — even on unrelated goods or services — weakens the uniqueness or reputation of the original brand. This form of infringement is more likely to be relevant to trade marks with a strong reputation or considerable public recognition.

Passing off

For unregistered trade marks, legal protection can still be sought under the common law tort of passing off. This occurs when a business misrepresents its goods or services as being associated with another brand, causing damage to the goodwill of the original brand owner.

How to prove trade mark infringement

To establish a case of trade mark infringement, the trade mark owner must show:

• A registered trade mark exists and is valid
• The defendant has used a sign similar or identical to that trade mark
• The sign was used in the course of trade, without permission
• There is a likelihood of confusion, or that the mark’s reputation has been damaged

In cases involving unregistered marks, a claim for passing off would require proof of goodwill, misrepresentation and damage.

Consequences of trade mark infringement

Trade mark infringement can lead to significant legal and financial consequences, including:

• Injunctions to stop further use of the mark
• Orders to remove or destroy infringing products
• Payment of damages or an account of profits
• Legal costs and reputational damage

In addition, infringing parties may be ordered to make public acknowledgements or apologies, particularly in cases where the infringement has harmed the original brand’s image.