Trade Marks Act 1994

  • Trade Marks Act 1994

4.1 Under the 1994 Act it is stated that trade mark infringement can occur where one uses, “in the course of trade” a sign identical with the trade mark in relation to goods or services which are identical with those for which it is registered.[1] From this, it can be gathered that a sign used to sell goods or services identical to an existing and registered trade mark is an infringement of that trade mark. The case of Arsenal Football Club[2] illustrates this concept of “course of trade” and further expands by focusing on the economic context in which the infringement occurred. It is evident that a view to profit is crucial in determining that infringement of a trade mark has occurred. The CJEU further emphasized the importance of a trade mark, notwithstanding its function as a sign of origin, but further denoting the trademarks wider economic functions, thereby widening the definition of “in the course of trade.”[3] Another aspect to be considered is the use “in the course of trade” in relation to goods or services. This can be understood as meaning to use a trade mark to distinguish goods or services from a particular origin, therefore, as shown in the case BMW v Deenik[4] the use of a trade mark for a descriptive reason does not constitute the infringement of a trade mark. In the case an independent trader operating a maintenance and repair shop used the BMW trade mark to identify that the associated motor vehicles and engines could be repaired there and to convey this to the public. The use of the BMW trade mark was determined not to be an infringement of the trade mark.

4.2 The 1994 Act also covers infringement wherein a sign may be identical or similar to a registered trade mark and is used in relation to goods or services similar to those for which the trade mark is registered and this similarity may cause likelihood of association.[5] This is illustrated in the case Bimbo[6] where a word-mark BIMBO DOUGHNUTS was challenged by the registered Spanish word mark DOGHNUTS. The likelihood of association was dismissed however, as the examination to conclude if there was possibility of association was determined to have to be conducted on the word mark as a whole, rather than in part. Therefore, by not assessing the similarity of the dominant part of a word mark, in which case here it would be “DOUGHNUTS” and “DOGHNUTS”, the word marks were deemed to not confuse the public by creating likelihood of association, as the word marks, on the whole, where two distinct entities.

[1] Trade Marks Act 1994 c. 26, s. 10 (1)

[2] Arsenal Football Club Plc. v Elite Sports Distribution Ltd [2002] EWHC 3057 (QB)

[3] Alice Blythe “Internal company emails: should the inclusion of trade marks be regarded as use in the course of trade or a private matter?” E.I.P.R. [2014] 36(2), 106-111

[4] Case C-63/97 Bayerische Motorenwerke AG v Deenik [1999] E.C.R. I-905

[5] Trade Marks Act 1994 c. 26, s. 10 (2), abogados de accidentes de trafico

[6] Case C-519/12 P Bimbo SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)