Trademark Infringement

The basic function of a trademark is that it is a sign of origin: it indicates the source or the trade origin of the goods and services to which it is applied. In addition to this essential function, trademarks can also fulfill other roles. For example, a trademark can act as a guarantor of quality; it can also fulfill an advertising role. For example, trademarks can convey particular messages or have a prestige associated with them that influence consumers' perceptions of the products bearing these marks. However, these additional functions are secondary to the trademark's principal role, which is to indicate origin.

Trademark Infringement Laws

In many countries, laws governing the definition, protection, and rights attributable to trademark owners date back to the 19th century. For example, Britain's first trademark legislation was provided by the Trademarks (Registration) Act of 1875. Many countries [Page 1596]that subsequently introduced their own trademark legislation adopted similar guidelines, particularly the requirement that the trademark should be “distinctive” to fulfill its essential function.

A Chinese Airport Customs House captured ink cartridges suspected of infringing on the trademark rights of EPSON.

The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which built upon the Paris Convention, defined a trademark as “Any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.”

Registration confers upon the owner exclusive rights to the trademark. Trademark infringement applies to registered trademarks and occurs when unauthorized use of another's mark is likely to cause confusion or to deceive as to the source or origin of the goods in question, although the precise emphasis differs between countries. For example, in the United States, the 1962 amendment to the Lanham Act of 1946 made more liberal the definition of infringement by removing the requirement that confusion, mistake, or deception of consumers as to the source or origin of the goods was required and stated that only the likelihood of confusion of an appreciable number of persons was necessary for infringement. It is often specified that for infringement to occur, the mark must be used in a commercial context, with a view to gaining economic advantage, and not as a private matter. The owner of a registered trademark is entitled to seek redress before the courts if there are grounds for believing that the mark has been infringed. The right to seek redress is provided for in the statutes governing the rights of registered trademark owners: for example, the Trademarks Act, 1994, in Britain.

Although the laws governing infringement stretch back to the 19th century, actions for infringement continue to be instigated by many of the world's most famous companies. For example, in the United States, Adidas versus Payless ShoeSource, which began in 2001 and ended in 2008; CISCO threatened to sue Apple for infringing its trademark iPhone in 2007. In Europe, actions for infringement have been launched involving Arsenal Football Club; Cadbury Schweppes; DaimlerChrysler AG; easyJet; Orange; and Waterford Wedgewood.

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