Trademark infringement

Trademark infringement occurs when others use or misuse a registered trademark without the permission of the trademark owner. Trademark infringement can be done by using the same or similar names or logos for identical or similar products or services or by selling fake products.



What is trademark infringement?

The conditions that must be met in order to speak of trademark infringement differ per country. Internationally, you can say that likelihood of confusion is the yardstick for determining whether there may be trademark infringement.

For example, certain products or services may be related to each other, so that they are registered in different classes, but there may still be an infringement. A brand name for drinks, for example, is related to catering services. Wine and wine glasses are not related to each other, but chicken meat and the transport of chickens are.



How does trademark infringement work internationally?

In some countries, trademarks that are considered similar to older trademarks during the registration procedure are refused. This does not happen in the European Union. In the EU it is up to the trademark holder to continuously check whether new trademarks are applied for that may infringe the trademark.

In countries such as China and the US, such marks are denied by the government agency.



What are the trademark infringement criteria?

Trademark infringement occurs when someone uses a trademark without permission from the trademark owner in a way that is likely to cause confusion or deception among consumers. To determine whether trademark infringement has occurred, several factors are typically considered, including the similarity of the trademark in question to the existing trademark, the similarity of the goods or services offered under the two trademarks, and the potential for confusion among consumers. It’s important to note that the criteria for determining trademark infringement can vary from country to country and from jurisdiction to jurisdiction. It’s always best to consult with a qualified attorney who is familiar with the laws in your area to determine whether a particular use of a trademark constitutes infringement



What are the elements of a trademark infringement claim?

In order to successfully bring a claim for trademark infringement, the trademark owner must typically prove several elements, including that they own a valid trademark, that the defendant used the trademark without permission, and that the defendant’s use of the trademark is likely to cause confusion among consumers. The trademark owner must also show that the defendant’s use of the trademark has caused or is likely to cause harm to the trademark owner’s business or reputation. The specific elements that must be proven in a trademark infringement claim can vary depending on the jurisdiction and the specific circumstances of the case. Again, it’s important to consult with a qualified attorney to understand the specific elements that must be proven in a trademark infringement claim in your jurisdiction.



How do you avoid trademark infringements?

To avoid trademark infringement, you should always conduct a thorough trademark search before using a trademark, and avoid using any trademarks that are similar to existing trademarks. It’s also important to properly attribute trademarks to their owners and use them in accordance with any usage guidelines provided by the trademark owner. In general, it’s always best to err on the side of caution and seek permission from the trademark owner before using a trademark. If you’re unsure whether a particular use of a trademark is likely to infringe on someone else’s rights, you should consult with a qualified attorney who can provide you with guidance on how to avoid infringing on someone else’s trademark rights.



How do you avoid trademark infringements?



What are the most common trademark infringement penalties?

The penalties for trademark infringement can vary depending on the jurisdiction and the specific circumstances of the case. In general, a party found to be infringing on someone else’s trademark rights may be ordered to stop using the infringing trademark, pay damages to the trademark owner, and potentially pay attorney’s fees. In some cases, a court may also order the destruction of any infringing materials. In addition to these legal penalties, a party found to have infringed on someone else’s trademark rights may also suffer damage to their reputation and loss of business. It’s important to note that the penalties for trademark infringement can be severe, so it’s always best to avoid infringing on someone else’s trademark rights.



What are the 8 elements used to determine infringement of a trademark?

There are several factors that are typically considered in determining whether a particular use of a trademark constitutes infringement. These factors can include:

The similarity of the trademark in question to the existing trademark.
The similarity of the goods or services offered under the two trademarks.
The potential for confusion among consumers.
The strength of the existing trademark.
The degree of care exercised by consumers when purchasing the goods or services in question.
The likelihood of expansion of the product lines of the parties involved.
The intent of the party using the trademark in question.
Any actual confusion among consumers that has occurred.

It’s important to note that the specific factors that are considered in determining trademark infringement can vary from jurisdiction to jurisdiction. It’s always best to consult with a qualified attorney who is familiar with the laws in your area to determine which factors are relevant in a particular case.



What is an example of trademark infringement?

A company using a trademark that is confusingly similar to the trademark of a well-known brand in order to sell its own products.
A company using the trademark of a well-known brand without permission on its own products in order to benefit from the goodwill and reputation associated with the well-known brand.
An individual using a trademark that is confusingly similar to the trademark of a well-known brand in order to sell counterfeit goods.
A company using a trademark that is confusingly similar to the trademark of a well-known brand in order to divert customers away from the well-known brand and towards its own products.

These are just a few examples of trademark infringement. It’s important to note that the specific circumstances of each case can vary, and it’s always best to consult with a qualified attorney to determine whether a particular use of a trademark constitutes infringement.

In the following example we explain this with a brand for solar panels in the US. An older registered mark sells mounting brackets for solar panels and the new brand wants a trademark registration for solar panels as a product.

These brands use different trademark classes, but the USPTO will consider that many other third parties are likely to sell both mounting brackets and also solar panels.

They would need to provide evidence of this, but it will not be difficult to find such cases.

In addition, if there is a party with a solar panel sales website that does not have a trademark registration, this will not affect the ability to register a trademark, because the USPTO will not consider unregistered uses of a trademark.

However, the company with the unregistered mark would have the right to oppose the application, or to seek cancellation later on if it became registered, based on their common law rights coming from their use of the mark.

The formal situation is that they might just have rights in a very limited geographic area, but they usually just try to cancel the entire registration if something like that happens.

It may be that this company is only providing an installation service and not selling panels that have the same name.

But the risk is still high because the marks are identical and the services are likely to be at a high risk of being a “related” good or service under US practice.

So overall, because both of these issues are for virtually identical trademarks, it seems that the new trade name should not attempt to register or to use their mark in the US in connection with solar panels.



What is the difference between copyright infringement and trademark infringement?

Copyright infringement and trademark infringement are two distinct legal concepts. Copyright infringement occurs when someone uses a copyrighted work without permission from the copyright owner in a way that violates the copyright owner’s exclusive rights. Trademark infringement, on the other hand, occurs when someone uses a trademark without permission from the trademark owner in a way that is likely to cause confusion or deception among consumers.

In general, copyright law protects original works of authorship, such as literary, musical, artistic, and other creative works. Trademark law, on the other hand, protects distinctive words, phrases, symbols, or designs that identify and distinguish the source of goods or services.

While the two types of intellectual property law share some similarities, they serve different purposes and protect different types of intellectual property. It’s important to understand the differences between the two in order to properly protect your intellectual property rights.