13 - Infringement Flashcards
When can infringement proceedings begin?
Once registration is complete (i.e. not during application process)
The use of what can be prevented under section 10?
- Identical signs + identical good/services
- Identical signs + similar goods/services + likelihood of confusion on the part of the public include a likelihood of association
or
similar signs + identical good/services + likelihood of confusion on the part of the public include a likelihood of association
- identical/similar mark + identical/similar/dissimilar goods/services and the registered mark has a reputation in the UK + the use without due cause + would take unfair advantage of, or be detrimental to, the distinctive character or the
repute of the registered mark
What are the five infringing acts?
(a) affixing the sign to goods/packaging
(b) offering goods for sale/putting them on the market/stocking them/offering or
supplying services under the sign
(c) importing or exporting goods under the sign
(ca) using sign as trade or company name (or part of that name).
(d) using sign on business papers and in advertising
(e) using in comparative advertising in a way that is contrary to the Regulations i.e.
identifying goods/services as those of the proprietor or a licensee
What are the defences to infringement under section 11?
- s11(1): defendant’s mark is registered
- s.11(2)(a): use of own name or address
- s.11(2)(b): descriptive use/non-distinctive
- s.11(2)(c): necessary use
A successful defence under any of the above requires that the use is “in accordance
with honest practices in industrial or commercial matters
- s.11(3): local passing off right
- S11A Non-use is a specific defence
What are the remedies of infringement of a RTM?
- damages
- account of profits
- injunctions
- delivery up
The court may make an order requiring the infringer to:
- erase, remove or obliterate the offending sign from any infringing goods; or
- secure the destruction of the infringing goods (if it’s not reasonably practicable
for the offending sign to be erased). If such an order is not complied with (or it’s likely it will not be complied with) the court may order that the infringing goods be delivered to another person for removal of the sign or destruction of the goods, as the case may be.
