Legislative framework and causes of action

The UK Trademarks Act 1994 (as amended) implements the EU Trademarks Directive (89/104/EEC) (now codified in Directive 2008/95/EC) to approximate the laws of the EU member states. There are nevertheless many important UK-specific matters to take into account when litigating in the United Kingdom, including:

  • the Civil Procedure Rules, which affect how cases must be run both before and after proceedings are issued;
  • the operation of the Intellectual Property Enterprise Court (IPEC), which involves caps on the costs which the court may award to a successful party;
  • provisions relating to unjustified threats of trademark infringement proceedings; and
  • the law of passing off to protect unregistered rights.

The United Kingdom has highly developed court systems, but parties are expected to make reasonable efforts to settle a dispute without the need for litigation. A party that acts unreasonably may be penalised by way of a costs order when the case reaches trial. In most cases, therefore, a trademark owner will send a cease and desist letter to an infringer as a first step. This is with a view to obtaining suitable undertakings from the infringer.

Registered rights

Under Section 10 of the Trademarks Act, a sign will infringe a registered trademark in the United Kingdom if it is used without the consent of the proprietor and is:

  • identical to the registered trademark and used in relation to goods or services that are identical to those for which the trademark is registered;
  • either identical to the registered trademark and used in relation to goods or services that are similar to those for which the trademark is registered, or similar to the registered trademark and used in relation to goods or services that are identical or similar to those for which the trademark is registered with a resulting likelihood of public confusion; or
  • identical or similar to a registered trademark with a reputation in the United Kingdom, where the use of the sign, without due cause:
    • takes unfair advantage of the distinctive character or repute of the earlier mark (free riding);
    • is detrimental to the repute of the earlier trademark (tarnishment); or
    • is detrimental to the distinctive character of the earlier mark (dilution or blurring).

Unregistered rights

There is no law of unfair competition or unregistered trademarks per se in the United Kingdom. However, unregistered marks are protected indirectly by the common law tort of passing off, which is aimed at preventing misrepresentations by one trader which lead to deception and damage the goodwill of another. A successful claimant in a passing-off action must prove goodwill, misrepresentation and damage:

  • Goodwill – the claimant must establish goodwill or a reputation attaching to a manner of trading (usually a distinguishable badge, brand or mark). The existence of goodwill will be decided on a case-by-case basis and depends entirely on the facts. The mark need not be well known; passing off can provide protection to a small business with a small customer base. There is no minimum period for which the mark must have been used. However, it will be easier to prove goodwill if the claimant has been using the mark for a substantial number of years.
  • Misrepresentation – the claimant must show that the defendant made a false representation which has led or is likely to lead the public to believe that the goods or services offered by the defendant are those of the claimant, or that there is some other form of connection with the claimant. It is not necessary to prove that the misrepresentation was made fraudulently.
  • Damage – the most common form of damage is direct loss of sales, but a claimant can rely on other forms of damage. For example, even if the parties are not in competition, the claimant may still suffer damage through association with the defendant where the defendant’s business is not reputable. Loss of licensing opportunities or licensing income may also be a relevant head of damage where the claimant already operates a licensing programme.

Passing off is an entirely independent cause of action, but is often run in parallel with a registered trademark infringement claim where the facts permit. Establishing passing off is generally relatively expensive because of the evidential burden (in particular, proving the existence of goodwill); but in some circumstances a claim in passing off will be the better (and perhaps only) cause of action available to the claimant.

Unjustified threats

The United Kingdom’s special law on unjustified threats is a trap for the unwary. It should always be a consideration and may influence tactics in any given matter. The government is in the process of changing the law on threats and the Intellectual Property (Unjustified Threats) Bill was published in May 2016. Once enacted, this will provide more protection to lawyers and attorneys acting on behalf of clients, and ensure that merely asking questions or stating the existence of rights does not constitute a threat.

The threats provisions are specific to the United Kingdom and are not derived from the Trademarks Directive. Essentially, as the law stands at the time of writing, the recipient of a threatening letter may bring proceedings for unjustified threats against the sender and may seek the following from the court:

  • a declaration that the threats are unjustifiable;
  • an injunction to prevent further threats; and
  • damages in respect of loss suffered as a result of the threats.

The unjustified threats provisions were designed to dissuade trademark owners from making threats to secondary infringers (eg, retailers), but their drafting means that a demand letter sent to the source of infringing goods may constitute an unjustified threat to that source.

Alternative dispute resolution

Mediation

The Civil Procedure Rules on pre-action conduct emphasise that litigation should be viewed as a last resort and parties should consider whether some form of alternative dispute resolution might enable them to settle the matter without proceedings. Therefore, while mediation is not compulsory, the court can require evidence that it was considered. A failure to mediate can result in severe adverse costs orders being made, particularly against a party that unreasonably refuses to mediate.

The most common type of mediation in the United Kingdom is facilitative mediation, where the mediator does not decide the case on its merits, but works with both parties to broker an agreement. An alternative is evaluative mediation, in which the mediator is asked to evaluate a claim and give the parties a view on the strengths and weaknesses of each side’s case.

Failure to mediate is particularly frowned upon in High Court cases. There is not the same pressure to mediate in the IPEC as there is in the High Court, although the costs caps that operate there provide an incentive to do so to avoid incurring irrecoverable costs.

Arbitration

Unless a contract exists between the parties that contains an enforceable arbitration clause, there is no requirement for parties in trademark litigation to engage in arbitration.

Litigation venue and formats

Claims for trademark infringement can be made to the High Court, the IPEC and the county courts at Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle.

The court fee for issuing a claim has recently increased significantly. In March 2015 the fee for issuing a claim in the High Court increased from £2,000 (plus the £480 payable if the claimant is seeking injunctive relief) for a claim for an unlimited amount to £10,000 (plus the £480 fee for injunctive relief).

Judges deciding trademark cases are typically IP specialists. The IPEC is designed to handle shorter, less complex and lower-value actions. This is with a view to providing cheaper and speedier procedures so that the cost of litigation does not deter small and medium-sized enterprises from protecting their rights. In order to be suitable for hearing in the IPEC, a claim must have a value of no more than £500,000. Longer, more complex and more valuable actions should still be conducted in mainstream High Court proceedings. However, recent experience of practitioners suggests that any claim with a value of less than £500,000 is being automatically transferred to the IPEC regardless of other factors (eg, complexity). The costs that the court will award to the successful party are capped for each stage of the claim. For example, the maximum amount that will be awarded in respect of drafting the particulars of claim is £7,000; in respect of preparing for and attending trial and judgment, the cap is £16,000.

A small claims track is available in the IPEC for straightforward claims with a limit of £10,000 on the value of the claim. The procedure provides for final injunctions, but not interim injunctions. Most claims on this track are resolved without the need for a hearing, either through mediation or on paper. Costs recovery in the small claims track is very limited.

Damages and remedies

Available remedies

If successful, the rights holder may obtain an order for:

  • a permanent injunction;
  • delivery up or destruction of infringing goods;
  • disclosure of supplier or customer information;
  • product recall;
  • payment of an account of profits or damages; and
  • payment of legal costs.

An award of damages is a remedy of right and will be awarded to compensate the claimant for its loss arising out of the infringement. By contrast, an account of profits is a discretionary equitable remedy allowing a claimant to recover the profit received by the defendant as a result of its use of the claimant’s trademark, without the claimant having to prove loss.

A successful claimant in a trademark infringement claim is entitled to either an account of profits or damages. The claimant is not entitled to both; it must elect between them. In order for profit to be recoverable under an account of profits, that profit must have resulted from the infringement. The recent case of Jack Wills v House of Fraser [2016] EWHC (Ch) has, for the first time, also allowed a trademark infringer to apportion its profits to reflect general overheads incurred in selling infringing products that displaced the sale of non-infringing products.

Interim injunctive relief

An interim injunction is a discretionary remedy. To obtain one, the applicant must show that it would suffer irreparable harm if an injunction were not granted until the end of a full trial. In particularly urgent matters, or if the trademark owner is concerned that the infringer may dispose of the infringing goods, it may be necessary to make the application without notice to the infringer and without first sending a cease and desist letter. For reasons of both substance and presentation, the rights holder must act quickly to obtain an interim injunction.

Evidencing the case

Survey evidence

The UK courts are generally reluctant to admit survey evidence in trademark infringement proceedings. Permission to adduce evidence from a survey must be obtained from the court. The requirements to be satisfied for a survey to have probative value were summarised in Interflora Inc v Marks & Spencer plc [2012] EWCA Civ 1501 as follows:

  • The way in which the interviewees are selected must be established as being done by a method, such that a relevant cross-section of the public is interviewed;
  • Any survey must be of a size that is sufficient to produce some relevant result viewed on a statistical basis;
  • The party relying on the survey must give the fullest possible disclosure of exactly how many surveys it carried out, exactly how those surveys were conducted and the totality of the number of persons involved, as it is impossible to draw any reliable inference from answers given by only a few respondents;
  • The questions asked must not be leading and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put;
  • Exact answers and not some sort of abbreviation or digest of the exact answer must be recorded;
  • The totality of all answers given to all surveys should be disclosed; and
  • The instructions given to the interviewers must also be disclosed.

The effect of these stringent requirements is that it is very difficult to design a survey that will be accepted by a court. In light of the considerable costs of undertaking a survey, parties should obtain the court’s approval of the questions and methodology before a proposed survey is carried out.

Expert witnesses

The admissibility of expert evidence in trademark litigation depends on the purpose of adducing the evidence and the nature of the business in question. Evidence that goes to the manner in which a business operates (eg, the way in which goods or services are sold or provided) is admissible, particularly in specialist fields. However, a court is unlikely to admit expert evidence on the issue of whether a likelihood of confusion exists or whether a sign takes unfair advantage of, or is detrimental to, an earlier mark.

Available defences

Section 10(6) of the Trademarks Act states that a person shall not be prevented from using a registered trademark for the purpose of identifying goods or services as those of the proprietor or a licensee, provided that any such use is in accordance with honest practices in industrial or commercial matters and does not without due cause take unfair advantage of, or cause detriment to, the distinctive character or repute of the trademark.

The specific trademark defences to trademark infringement are in Section 11 of the act and apply only where the use of a sign is in accordance with honest practices in industrial or commercial matters. They are as follows:

  • the use by a person or company of his or her own name or address (although this will be restricted to personal names only from January 14 2019 as a result of the new Trademarks Directive);
  • the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services or other characteristics of goods or services (this will be extended to include not just indications, but any sign that concerns such a characteristic from January 14 2019);
  • the use of a trademark where it is necessary to indicate the intended purpose of goods or services (in particular, accessories or spare parts) (this will be extended to include not just indications as to purpose, but all uses of the mark for identifying or referring to goods or services as those of the trademark proprietor from January 14 2019); and
  • the use in the course of trade in a particular locality of an earlier right which applies only in that locality (here, an ‘earlier right’ means an unregistered trademark or other sign continuously used in relation to goods or services to the extent that its use is protected by virtue of any law – in particular, passing off).

Appeals process

Decisions of the IPEC or the High Court may be appealed to the Court of Appeal and then to the Supreme Court. A party must always obtain permission to appeal a decision.

Permission to appeal to the Court of Appeal will be granted only where the appeal has a real prospect of success or where there is some other compelling reason why the appeal should be heard. An appeal to the Court of Appeal will either succeed where the decision of the lower court was wrong – in that it contained an error of law, an error of fact or an error in the exercise of the court’s discretion – or where the lower court’s decision was unjust because of a serious procedural or other irregularity.

Permission to appeal to the Supreme Court is granted for applications that raise an arguable point of law of general public importance that ought to be considered by the Supreme Court at that time. An application that does not raise such a point of law will be refused on that ground.

Nabarro LLP

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Tel +44 20 7524 6000

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David Parrish Partner d.parrish@nabarro.com

David Parrish joined Nabarro in 2008 and became a partner in 2014. Mr Parrish has broad experience of advising clients in relation to brand protection matters. His practice covers a range of work, including general trademark infringement matters, anti-counterfeiting, parallel imports and domain names.

Mr Parrish has particular expertise advising clients operating in the technology and fashion sectors, and has acted for such clients in High Court litigation. He has also acted for the complainant in a number of domain name disputes, under both the United Kingdom’s Nominet Dispute Resolution Service Policy and the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers.

Oscar Webb Associate o.webb@nabarro.com

Oscar Webb completed his legal training at Nabarro and qualified as an associate in the IP team in 2011.

Mr Webb advises clients on both contentious and non-contentious trademark issues, such as company names policing, trademark oppositions, trademark invalidation and cancellation proceedings and domain names.

Mr Webb has a number of key clients in the finance, retail and leisure sectors. He is frequently instructed by well-known US and European IP firms, and in turn frequently instructs other lawyers all over the world.

This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.