Top 10 Defenses Against Trademark Infringement Claims: A Comprehensive Guide

October 28, 2024 Elanthomas767

Defending against a trademark infringement claim requires a solid strategy, often based on proving that your use of the trademark was lawful or does not cause consumer confusion. Here are some common defences:

1. No Likelihood of Confusion

A key defence is arguing that there is no likelihood of confusion between your use of the mark and the claimant’s trademark. Courts examine whether the average consumer would be misled or confused by the similarity between the trademarks. Factors considered include:

Differences in the visual appearance or sound of the marks.
The nature of the goods or services offered under each mark.
Whether the target market or customer base is different.

For example, if the goods or services differ significantly or the branding is visually distinct, confusion may not occur, weakening the infringement claim.

2. Use in Good Faith (Descriptive Use)

A defense known as “descriptive use” can apply when you’re using the trademark in a descriptive manner. If you’re using a term that is common in your industry and only as a way to describe your products or services rather than as a brand, you may argue that the trademark was used in good faith. However, this defence generally doesn’t apply if your usage is misleading or implies a connection with the trademark owner.

This defence is particularly relevant for terms that describe qualities, characteristics, or ingredients of a product.

3. Prior Use

If you can show that you used the trademark in commerce before the claimant registered or used their mark, you may claim a prior use defence. In the UK, this defence is limited to specific geographical areas where the mark was being used before the other party’s trademark registration.

4. Consent or License

If you were given explicit or implied consent by the trademark owner to use the mark, you can argue that the use was authorized. This defence applies in cases where a license agreement exists between the parties, or where the trademark owner’s actions indicated that the use was permitted.

5. Non-Use of Trademark

In some cases, you can argue that the claimant has not used their trademark in commerce for a continuous period of five years or more, which can lead to the cancellation or revocation of their mark under UK law. This is a particularly strong defence if the claimant has not been active in using the mark and is simply seeking to block your use.

6. Fair Use and Parody

In certain situations, fair use applies, such as for parody, criticism, or commentary. If your use of the trademark is clearly non-commercial or serves as social commentary, courts may view it as fair use, although this is a complex and case-specific defence.

7. Concurrent Use

In some cases, both parties may have used similar trademarks in different markets or geographical regions. Concurrent use defences can apply when two businesses have used the same or similar marks without causing confusion, particularly if they operate in unrelated fields.

8. Invalidity of the Trademark

Another defence is challenging the validity of the claimant’s trademark. You can argue that the trademark:

Is descriptive or lacks distinctiveness.
Was registered in bad faith with no intention of use (as seen in the SkyKick v Sky case
Is deceptive or contrary to public policy.

9. No Use in the Course of Trade

Trademark infringement only applies if the mark is used in the course of trade. If you can show that your use was personal or non-commercial, the claimant may not be able to establish infringement.

10. Jurisdictional Issues

If the claim involves online sales or advertising, you may be able to argue that your website or advertisement was not targeted at the UK or the claimant’s jurisdiction. This defence is based on several UK and EU cases, including Lifestyle Equities CV v Amazon and the L’Oréal v eBay case, which established that trademark infringement occurs when online activities target a specific country.

Conclusion

Defending a trademark infringement case requires a comprehensive understanding of the laws surrounding intellectual property and the specific circumstances of your use of the trademark. Each of these defenses may apply depending on the facts of the case.