Trade marks are distinctive names, domain names, words, logos, slogans, phrases, symbols, images, colors, product designs, product packaging (trade dress) that manufactures or sellers affix to distinguish and identify the origin of their products. The owner of a trade mark has exclusive rights to use it or on the product it was intended to identify. Service marks receive the same legal protection as trade marks but are meant to distinguish services rather than products.
In the US, trade marks may be protected by both Federal Statute under the Lanham Act, (15 U.S.C 1051-1127) and States statutory and common laws. Under State common law, trade marks are protected as part of the Law of Unfair Competition. Registration is not required.
A trade mark infringement is an unauthorized use or reproduction of a trade mark that creates the likelihood of confusion in the mind of a consumer regarding the source of goods or services.
If the customer is found likely to believe that the trade mark infringer's goods or services are those of the person or entity who actually owns the trademark, damages may be awarded for the trademark infringement. In other words, the likelihood of confusion test seeks to answer the question of whether the junior user's use or reproduction of a trade mark creates a "likelihood of confusion" among consumers as to the source or association of the junior user's goods, such that infringes the senior user's rights.
Usually the following tests are used to determine likelihood of confusion and how they have been applied by the Courts:
Strength of the mark1 Similarity of the marks2 Similarity of goods3 Channels of trade4 Consumer Sophistication5 Wrongful Intent6 Actual Confusion7 Zone of Natural Expansion8 Where the marks, however, are similar and the products or services are also similar, it will be difficult to establish the "likelihood of confusion". In the case of AMF Inc., v. Sleekcraft Boats9, the plaintiffs owned the trade mark "Slickcraft" which they used to promote the selling of boats for general family recreation. They brought an action for trade mark infringement against the defendants who used the mark "Sleekcraft" in connection with the sale of high-speed performance boats. The Court thought that the products were indeed related but they were not identical; the two types of boats served substantially different markets. However, after applying many of the tests listed above, the court decided that the use of Sleekcraft was likely to cause confusion among consumers.
In UK the "likely of confusion" is an essential requirement for a finding of infringement under s.10 (2) of the Trade Mark Act. This includes a "likely of association also which was first introduced into UK trade mark law by The 1994 Act 10 Section 10(2) of the TMA provides that if an identical or similar sign is used in conjunction with identical or similar goods for which a mark is registered then there is infringement if there is a likelihood of public confusion. In cases falling under this section, judges apply a three part test. First consider the identity similarity of the mark with the sign; second, analyse the concept of similarity between the respective goods and services; and...