Trademark infringement
Trademark infringement is a violation of the
exclusive rights attaching to a registered
trademark without the authorisation of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the "infringer", uses a trademark which is identical or
confusingly similar to a registered trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a registered trademark may commence
legal proceedings against a party which infringes its registration.
A trademark which is not registered cannot be "infringed" as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner may be able to commence proceedings under the common law for
passing off or
misrepresentation, or under legislation which prohibits
unfair business practices. In some jurisdictions, infringement of
trade dress may also be actionable.
Where the respective marks or products or services are not identical, similarity will generally be assessed by reference to whether there is a
likelihood of confusion that consumers will believe the products or services originated from the trademark owner. If the respective marks and products or services are entirely dissimilar, trademark infringement may still be established if the registered mark is well known pursuant to the
Paris Convention. In the United States, a cause of action for use of a mark for such dissimilar services is called
trademark dilution.
In some jurisdictions a party other than the owner (eg. a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.
The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid
exception (e.g. comparative advertising) or
defence (e.g.
laches) to infringement, or attack and cancel the underlying registration (eg. for non-use) upon which the proceedings are based.
*
Exhaustion of rights*
Passing off*
Trade dress
