Trademark Infringement

Trademark infringement occurs when someone uses a trademark without authorisation in a way that is likely to cause confusion about the source of goods or services. This may involve using an identical mark on identical goods, using a similar mark on similar goods, or using a mark in a way that suggests affiliation or endorsement by the trademark owner. Infringement can also occur through counterfeiting where fake goods bear identical marks, or through dilution where a famous mark is weakened by unauthorised use that blurs its distinctiveness or tarnishes its reputation. The key question is whether consumers are likely to be confused about the source or sponsorship of the goods or services.

Proving trademark confusion typically involves analysing multiple factors including the similarity of the marks in appearance, sound, and meaning, the similarity of the goods or services, the strength of the senior mark whether it is distinctive and well-known, evidence of actual consumer confusion such as mistaken inquiries or purchases, the defendant's intent in choosing the mark, the degree of care consumers exercise when purchasing the goods or services, and the likelihood of expansion into overlapping markets. Courts consider these factors holistically rather than as a rigid checklist. Evidence such as consumer surveys, testimony from confused customers, and examples of actual confusion can strengthen a claim.

Passing off is a common law cause of action that protects unregistered trademarks and business goodwill. It occurs when one business misrepresents its goods or services as those of another, causing damage to the other business's reputation. To prove passing off, the claimant must establish that they have goodwill or reputation in the mark or get-up, the defendant made a misrepresentation likely to deceive the public, and the claimant suffered damage as a result. Passing off protects against false representations that lead consumers to believe there is a connection between the businesses when none exists. It is particularly important for businesses that have not registered their trademarks.

Yes, unregistered marks can be protected through common law passing off actions and in some jurisdictions through unfair competition laws. Protection for unregistered marks is based on the goodwill and reputation the business has built up in the mark through use. However, protection for unregistered marks is generally more limited than for registered trademarks. Registered trademarks provide nationwide protection, a presumption of ownership, and statutory damages in some cases. Unregistered marks may only be protected in the geographic area where the business has established goodwill and reputation. Registering trademarks provides stronger and more efficient protection.