CPD session on trade mark law

[Question 3]

The senior partners have been invited to attend a CPD session on trade mark law. Review the case law concerning s10 of the Trade Mark Act 1994 and clearly establish the various heads of claim available to a pursuer depending on the nature of the ‘infringing’ conduct to aid their preparation.

I am asked to address the following issues in this opinion:

  1. The infringement of a registered trade mark
  2. The heads of claim available to a pursuer
  • Trade mark definition

1.1 In order to consider these questions, it is important to consider the definition of a trademark. Trade Marks Act 1994 provides that a trade mark is “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.[1] The main purpose and function of a trade mark, besides the aforementioned indication of origin of the goods or services, is the capability of a specific trade mark distinguishing its goods or services from that of another business.[2]

1.2 It is evident from this that a trade mark functions as a “badge of origin”.[3] This “badge” serves the function of being distinctive and therefore ensuring the recognition of particular goods or services by a substantial amount of consumers. It was stated in the case of Perry v Truefitt[4] that a merchant “cannot be allowed to use names, marks, letters or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person”,[5] which shows that UK common law, in as early as the 19th century, was familiar with what a trade mark represents, – the goods or services of one producer/manufacturer that has an established reputation in the area they operate and that needs to be safeguarded.

[1] Trade Marks Act 1994 c. 26, s.1 (1),  Visit the abogados de accidentes website

[2] White Paper, Reform of Trade Marks Law, DTI, September 1990, Cm 1203, ch.2

[3] David I. Bainbridge “Smell, sound, colour and shape trademarks: an unhappy flirtation?” J.B.L. [2004 Mar] 219-246

[4] Perry v. Truefitt, 5 Beavan 66 (1842)

[5] ibid. para 73