Concept of Trademark Infringement and Trademark Protection
Infringement occurs when a person or company use a trademark which is similar or identical to another trademark owned by some other party having already acquired distinctiveness or registered rights. The actual trademark owner may bring the infringer to court to protect exclusive rights attached with the trademark.
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Infringement of an unregistered trademark but having ‘acquired distinctiveness’ can also be challenged.
To establish infringement courts generally see whether the infringed trademark can create ‘likelihood of confusion’ for the customers and whether it is used in sale, purchase, distribution or marketing of similar goods or services. The intent of the infringer is generally determined by the fact whether the trademark is used to sell similar class of products or services in the same competitive territory as used for by the original trademark owner.
Some trademark infringements may trick consumers making it difficult to determine the source identifier. For example, Belfast taxi brands Value Cabs and Fonacab moved court to protect their trademark rights when the infringer party merged both names to create a new taxi company FonaValue. In 2022, the High Court decided in favor of Value Cabs and Fonacab and granted injunction to protect their infringed trademark rights. [RD]
It is possible for the accused infringer to successfully defend the case as exception. For example, McDonald’s accused then Ireland-based restaurant Supermac’s about infringement of its registered trademark ‘Big Mac’ – because of similarity and likelihood of confusion between ‘Big Mac’ and the Supermac’s.
If the Supermac’s had defended the case on the grounds of mere distinctiveness, McDonald’s had a better chance of victory. But Supermac’s followed a different line to defend it by claiming that the trademark ‘Big Mac’ was not being genuinely used in classes it was registered for. In other words, instead of proving the distinctiveness of their own “Supermac’s” they questioned the legal use and existence of ‘Big Mac’ trademark. In its decision in 2019, The EUIPO held that McDonald’s could not prove genuine use of the trademark through actual sales or transactions.
So, in this case Supermac’s was accused of infringement but its owners intelligently even stripped the McDonald’s for the exclusive rights for ‘BIG MAC’ trademark. [RD]
Interestingly, when the Supermac's (Holdings) Ltd filed for the wordmark “SUPERMAC'S” in UK in April 2021, its status is yet ‘Opposed’ up till the writing of this article. With no surprise, it is opposed by McDonald’s. [RD]
On the other hand, McDonald’s has successfully prevented many infringements of its trademarks such as ‘McVegan’ in 2021 – primarily due to the distinctiveness of ‘Mc’ prefix in the wordmark, even though it was not registered trademark in the UK.
Apple Inc. is not the sole owner of the trademark. The ‘Apple’ trademark is also granted to another company, making horseshoes, in the EU since 2004 but with different signs, logo design, and product classes related to rubber and metals. [RD]
The claims of trademark infringement become weak when other party names their business (even unregistered) after the names of places. For example, The Star Inn, Vogue is a pub in village of Vogue in Cornwall. The owner of the famous Vogue magazine wrote the letter to the owner for removing ‘Vogue’ from the name of pub, citing that ‘Vogue’ is their registered trademark. However, after knowing that the village of vogue is several hundred years old than the name of magazine, the notice was withdrawn.
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