IP 2.12 TRADEMARK INFRINGEMENT
Registration evidences title thus, a condition precedent to an action for infringement.
Section 5 and 6 provides that the registered proprietor has exclusive right to use the TM in relation to its registered goods. Hence, an unauthorised use of the registered mark or a resembling or identical mark constitutes an infringement.
Infringement is a question of fact and circumstances. Burden of proof lies on the proprietor of the registered mark.
The courts compare both sight and sound-Beecham Group V Esdee Food Products the court held that “Glucose-aid” was too similar to “Lucozade” and was likely to cause confusion.
In 7-Up V Bubble Up, the court held that the words 7up and Bubble up were similar.
In IRC V Jena, the words “Dossex Gossamer” were similar to the plaintiff’s “Durex Gossamer”.
In Alban Pharmacy V Sterling Products Casorina was held to be too similar to Castoria and was likely to deceive customers.
The intention of the defendant need not be fraudulent so long as the mark/word confused the public-Re Egg Products Application.
DEFENCES TO TRADEMARK INFRINGEMENT
- Invalidity of the registration of the mark or no registration in the first place.
- The defendant may allege as a defence that the trademark registration was obtained by fraud.
- Deceptive or scandalous mark.
- No likelihood of confusion.
- Use in relation to goods in another course of business.
- Independent right to use the mark.
- That he has been using the TM before the Plaintiff registered it.
- Section 8-that the defendant is using his own name bona fide and honestly in good faith. Devoid of fraud. Baume V Moore, the defendant company had been using the name “baume” in watches for almost 100 years before the plaintiff registered the same name.
- Consent, delay or acquiescence. Fullwood V Fullwood, delay vitiated the plaintiff’s claim.
The Act is silent, but case law reveals that the remedies include: damages, injunction, account for profit (the discussions on remedies earlier in this work can be applied here), Section 3 of the Merchandise Act provides for criminal remedies.
JURISDICTION: Section 55 places this on the federal high court.