Struggling to understand trade mark infringement issues? Here's my checklist

IPKat readers might remember that a few months ago I posted my Copyright Infringement Checklist, ie a list of the main aspects to consider when addressing potential infringement issues. 

I named it after myself not just because both cats and Kats are notoriously vain, but - importantly - because it was intended to be neither authoritative nor exhaustive.

Now that I have finished the trade mark part of my undergraduate intellectual property law course at the University of Southampton, I have prepared another checklist, this time for alleged trade mark infringement cases. 

Again, the aim is simply to help my students when thinking about potential infringement issues, considering that (again) I have not been able to find many useful summaries/tables.

Any feedback/suggestions on how to improve it are - as usual - very welcome.

ROSATI TRADE MARK Infringement Checklist*
Main aspects to consider when addressing potential infringement issues

Trade mark infringement is about 7 essential things

(1)  Use (NB: non-exhaustive list!)[1]
                            i.          Person affixes sign to goods or packaging thereof;
                          ii.          Person offers or exposes goods for sale, put them on the market or stocks them for those purposes under the sign[2] or offers or supplies services under the sign, or offers or supplies services under the sign;
                         iii.          Person imports or exports goods under the sign (NB: currently goods in mere transit do not fall under this category);
                         iv.          Person uses the sign on business papers or in advertising, including comparative advertising.[3]

(2)  Without consent[4]

(3)  In the course of trade (= “used in the course of a commercial activity with a view to gain and not as a private matter”)[5]

(4)  In the relevant territory
·        UK for UK trade marks, EU for Community trade marks;[6]
·       For online uses, Bently and Sherman hold the view that targeting required.

(5)  Of a sign
·        Same hyphoteses as in relative grounds for refusal of registration:
1)  Identical marks for identical goods/services[7];
2)  Identical marks for similar goods/services[8] + likelihood of confusion (including association)[9];
3)  Similar marks[10]  for identical/similar goods/services + likelihood of confusion (including association);
4)  Identical/similar marks for dissimilar goods/services + earlier trade mark has a reputation + use would take unfair advantage of/be detrimental to character/repute trade mark.[11]

(6)  Where such use affects one of the functions of the registered trade mark[12], eg:
·        Indication of origin;
·        Quality;
·        Advertising;
·        Investment.

(7)  And no defences are available to defendant (NB: for some defences additional “honest practices” requirement)
·        Trade mark should be removed from register;
1)  Because it is invalid = should have not been registered in the first place
                                                                    i.          Absolute grounds for refusal of registration, eg lack of distinctive character, descriptive, “forbidden” shape, public policy/morality, bad faith, etc;
                                                                  ii.          Relative grounds.[13]
2)  Because it should be revoked
                                                                    i.          Non-use
·        Within 5 years from registration;
·        Use suspended for uninterrupted period of 5 years.
                                                                  ii.          Trade mark has become generic;
                                                                 iii.          Trade mark used to deceive consumers.
·        Use of another trade mark (UK trade marks only);
·        Use of one’s own name/address;[14]
·        Descriptive use, including use to indicate intended purpose;
·        Comparative advertising[15];
·        Local use;
·        Exhaustion;
1) put on the market[16]
2)  “without consent[17]
3)  no “legitimate reasons
                                                                    i.          Alteration of goods
                                                                  ii.          Change of packaging
                                                                 iii.          Change of mark
                                                                 iv.          Advertising
·        Freedom of expression (NB: no codified defence as such).

* The addition of “Rosati” not only means that I am the author of the checklist, but also (and most importantly) that this is not (necessarily) authoritative. It is just something to consider when dealing with potential infringement issues.
[1] Key case on notion of “use” is Google France.
[2] Key case on notion of “under the sign” is Céline.
[3] Key case on comparative advertising is L’Oréal.
[4] Cf trade mark exhaustion sub (7).
[5] Key cases on notion of “use in the course of trade” are Arsenal and Céline.
[6] Use in one Member State alone can suffice: see DHL.
[7] Key case on notion of identity is Sadas.
[8] Key case on notion of similarity of goods/service is Canon.
[9] Key case on likelihood of confusion is Puma.
[10] Key case on notion of similarity of signs is Puma.
[11] Key cases on trade marks with a reputation are Yplon, Adidas-Salomon (use of a trade mark as embellishment) Intel (notion of “link”), L’Oréal, Interflora.
[12] Key case on functions of a trade mark is Interflora.
[13] See supra sub (5).
[14] Key case is Céline.
[15] Key case is L’Oréal.
[16] Key case is eBay.
[17] Might be problematic when a licence is in place: see Dior.
Struggling to understand trade mark infringement issues? Here's my checklist Struggling to understand trade mark infringement issues? Here's my checklist Reviewed by Eleonora Rosati on Monday, March 02, 2015 Rating: 5


  1. This is brilliant - so helpful, thanks! I'm currently doing the Cert in TMs at Queen Mary's, but like you say there aren't that many useful summaries around. I've spotted your copyright checklist, any chance you are working on one for design law??

  2. Thanks so much for your encouragement Vicky! I am not sure yet ... if so, I will make sure to post it here! Good luck with your course :-)

  3. I'm not sure that the statement "And no defences are available to defendant" is strictly helpful, since there defences or at least grounds for revocation which might amount to the same thing, some of which you go on to list. One you haven't mentioned, in regard to UK law, is acquiescence (s 48 TMA 1994).

  4. It also occurs to me that although the check list is specifically entitled 'trade mark infringement' would it not be appropriate to include a short comment about passing off, as this tort frequently involves both registered and unregistered trade marks?

  5. Interesting and helpful checklist Eleonora.
    I would add Reputation and associations in p.6 because one of the negative consequence from trademark infringement is the possibility for ruining trademark reputation in consumer mind.
    Both reputation and association is important characteristic for trademark functions as they support consumers in their choice in my opinion.

    Best wishes

  6. Am I allowed to use a trademark in my online description of my product to state that my product is compatible with the trademark?

    For example the cable I use to link my iPod to my BMW is sold as an "iPod BMW Cable". Is this infringing the iPod and BMW trademarks?

    My specific problem is that I sell DVDs which teach moves for Modern Jive. The biggest brand in Modern Jive is Ceroc. I sell a DVD called "The Modern Jive Toolkit" Can I use a description such as "The Modern Jive Toolkit - Improve your Ceroc and LeRoc" on eBay and Amazon without infringing Ceroc's trademark?

    Thanks. John

  7. Hi John, I believe that would come under the defence of 'descriptive use' mentioned in the list above!!

  8. This comment has been removed by the author.

  9. Hi, I'm struggling to find clarification on this so perhaps you can help? Can a trademark that ISN'T being used in the course of trade be opposed?

  10. HI

    So if a state school were to adjust a trademark for a piece of art display, would this be an infringement?


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