Trade Mark Law (UK) - Infringement Criteria

Question 1

What section of the Trade Marks Act 1994 defines the exclusive rights conferred by a registered trade mark?

Answer 1

Section 9

Section 9(1) of the Trade Marks Act 1994 outlines the exclusive rights of a registered trade mark proprietor.

Question 2

Which ground of infringement is often referred to as “double identity”?

Answer 2

Section 10(1)

Section 10(1) addresses cases of identical signs and identical goods/services, commonly referred to as “double identity.”

Question 3

Under Section 10(2), the likelihood of confusion includes which of the following?

a) Loss of distinctiveness
b) Confusion about trade origin
c) Misuse of a famous mark
d) None of the above

Answer 3

Confusion about trade origin.

Explanation: Under Section 10(2), the courts assess whether confusion, including association with the trade mark’s origin, is likely.

Question 4

Which of the following is NOT considered “use in the course of trade” under Section 10(4)?

a) Putting goods on the market under the trade mark
b) Using the mark in advertising
c) Affixing the mark to personal belongings for private purposes
d) Importing goods under the mar

Answer 4

Affixing the mark to personal belongings for private purposes.

Explanation: Section 10(4) only covers commercial activities like marketing and selling goods/services under the trade mark.

Question 5

What was the key issue in Louboutin v. Amazon (2023)?

Answer 5

Whether online platforms can be liable for harm to a trade mark’s reputation.

Explanation: The case examined liability of platforms (like Amazon) for actions that harm the reputation of trade marks displayed on their sites.

Question 6

A trade mark must be actively used by the proprietor to be infringed.

(True/False)

Answer 6

False

Explanation: A trade mark can still be infringed even if it is not in active use, though unused marks may have weaker protection (e.g., under Sections 10(2) or 10(3)).

Question 7

Under Section 10(3), a trade mark with a reputation can be protected against use that causes no confusion but dilutes its distinctiveness or repute.

(True/False)

Answer 7

True

Explanation: Section 10(3) protects marks with a reputation from dilution or tarnishment, even in the absence of confusion.

Question 8

The investment function of a trade mark involves ensuring consumers are not confused about the origin of the goods.

(True/False)

Answer 8

False

Explanation: The investment function concerns preserving a mark’s reputation and consumer loyalty, not necessarily protecting origin.

Question 9

Comparative advertising can never constitute trade mark infringement.

(True/False)

Answer 9

False

Explanation: Comparative advertising can constitute infringement if it takes unfair advantage or tarnishes the trade mark’s reputation (e.g., L’Oréal v. Bellure).

Question 10

Selling a trade mark as a keyword on a search engine always qualifies as “use in the course of trade.”

(True/False)

Answer 10

False

Explanation: Keyword use is not automatically infringement; it depends on its commercial context and whether it harms the trade mark’s functions (e.g., Google France v. Louis Vuitton).

Question 11

What are the three conditions that need to be proven under Section 10(3) to establish trade mark infringement?

Answer 11

1. The trade mark has a reputation in the UK.
2. The defendant’s use creates a link in consumers’ minds between the sign and the trade mark.
3. The use causes unfair advantage, dilution of distinctiveness, or harm to repute without due cause.

Question 12

How does the concept of “targeting” affect whether a trade mark used on an international platform is considered infringement in the UK?

Answer 12

Targeting ensures infringement liability only if the goods or services are actively aimed at UK consumers. Key factors include UK-specific delivery options, language, and marketing intent (e.g., Lifestyle Equities v. Amazon, Argos UK v. Argos US).

Question 13

Explain the significance of the case Arsenal v. Reed (2003) in shaping the trade mark “use” requirement.

Answer 13

The case clarified “use in the course of trade,” ruling that use interfering with the essential function of guaranteeing trade origin constitutes infringement, even if consumers view the sign symbolically (e.g., badges of loyalty).

Question 14

What is considered “due cause” under Section 10(3), and how does it relate to balancing the interests of trade mark proprietors and third parties?

Answer 14

Due cause refers to legitimate interest, not simply honest intent, in using the mark (e.g., freedom of expression or commercial necessity).

It balances trade mark rights with competition and free speech (e.g., Leidseplein Beheer v. Red Bull).

Question 15

How has the L’Oréal v. Bellure (2009) case influenced the scope of trade mark protection under advertising and investment functions?

Answer 15

The case expanded trade mark protection to cover advertising and investment functions, allowing owners to claim infringement if unauthorized use harms their promotional or reputational strategies.

Question 16

Discuss whether you agree with Jacob LJ’s criticism of the expanding “functions” of trade marks, which he argued may lead to unwarranted monopolies.

Provide an argument for or against.

Answer 16

This is subjective. An agreement might argue that expanding trade mark functions shifts protection from consumer welfare (origin function) to purely commercial benefits (advertising/investment monopolies).

Conversely, disagreement could highlight the need to protect modern branding strategies in competitive markets.