Trademark infringement is the illegal use of a trademark in a way that it can lead to confusion, be mistaken for or be deceiving about the source of a particular product or service.
Registering a Trademark
The registration of a trademark ensures necessary legal security should you ever face an infringement. While, most establishments recognize the significance of registering a trademark, this is just the very basic step in the evolvement of a product. A start up or a business that’s launching new services/products need to steer clear of any imitations of existing brands that are trademarked and avoid getting caught for infringement.
Avoiding Trademark Infringement
Trademark infringement essentially pivots on whether there’s a possibility of confusion caused by two marks. Comparison of marks is usually the most important consideration to decide upon whether there’s being an infringement or not. For instance, since the brand Apple owns APPLE and MAC (Macintosh), they can challenge another establishment from setting up a computer company under another variety of the ‘apple’ brand.
Comparison of Goods and Services
Yet another common factor that’s significant to establish infringement is the comparison of goods and services. For instance, if a consumer expects the tires for a car and the tires of a motorbike to come from the same trademarked company, he may not anticipate the fact that the same mark could be used for bicycle tires as well.
Popular Infringement Cases
After more than a decade of legal battle between Black Bear Micro Roastery and STARBUCKS, a US appeal court ruled against the latter, despite the fact that Black Bear’s CHARBUCKS BLEND coffee and STARBUCKS sound similar and the products were identical as well. As per a survey conducted by STARBUCKS as evidence, the court found that consumers felt there was no confusion to the source behind CHARBUCKS and few others believed STARBUCKS was the actual seller.
In yet another case, an EU appeal court considerable similarity between the STARBUCKS COFFEE logo and the circular COFFEE ROCKS logo, with the judgment in favour of the former. Despite a low level of similarity between the two at the first glance, the overall visual appeared similar on account of the word COFFEE and the use of the same colour scheme, which also presents the peril of imitating a popular brand.
New Zealand Trade Marks Act
In New Zealand, the Trade Marks Act 2002 permits a wide array of public solutions to recompense registered trademark companies for damage on account of trademark infringement. Forging or brand piracy is a criminal offence in a lot of countries and in New Zealand may entail a sentence of 5 years in prison or a fine of NZ$150,000. This is best referred in the case of Carol Baskin and Joseph Maldonado-Passage where the latter was accused of trademark & copyright breach and ordered to pay $1 million in damage.
A NZ registered trademark is applicable for protection only in New Zealand. From a global perspective, you’d need to register your trademark overseas as well. You can file separate applications in each country one by one or an international request through the Madrid System which specifies all the countries you are seeking approval from. With each country having a different law for trademarks, it best to route this through an expert before submitting your trademark applications.
Thinking ahead and protecting your trademark can go a long way for your business and help you avoid any legal hassles. Before you end up registering your new trademark, get a professional trademark search conducted. Choose something distinctive for your mark. Even though choosing a mark that describes your product/service to the ‘T’ is quite tempting, such trademarks can be difficult to proclaim.
A trademark registration’s applicable only for the goods or service you provide. For example, if another company uses a particular mark for their beauty services, you may still be allowed to use and register it for your auto repair service or another business. The use of most trademark registrations cover multiple categories of goods and services.