Trademark Laws

Trademark Law

Part A

Introduction

A trademark identifies a company and its product(s) or service(s) to consumers. Trademarks that are successfully identified with a particular company may be instantly recognizable. For instance, children all over the world, even those who cannot read, know that the golden arch trademark represents McDonald's fast food restaurant.

Background of Case

Trademark infringement deals with commercial use of a trademark “without the consent of the owner with intent to cause confusion or to cause a mistake or to deceive.” Trademark infringement may consist of reproducing, counterfeiting, copying, or deceptively imitating a registered trademark. The infringement may occur through the use of the violating trademark in advertising, packaging, letters, websites, promotional materials, etc. Successful trademarks often imbue consumers with feelings of familiarity and confidence; therefore, when another individual or company infringes on a trademark, consumers may be misled into buying the infringer's product or service. If the product is inferior, it may negatively impact on the trademark holder's business.

As the Scenting Ltd scent has a smell very like to Naissance, therefore the Chic SARL decided to commence proceedings for its infringement in the English courts because they own the trademark for Naissance.

Trademark infringement cases are often personal and highly emotional because both parties feel that their very identities are at stake, and at least one of the parties in the suit may have spent years establishing a reputation based on the trademark. Throughout the history of trademark law, courts have been asked to decide whether infringement has occurred, whether the likelihood of confusion exists, whether the infringement was intentional, whether an infringement resulted in damage to the legal owner of the trademark, and what remedies are available when infringement is upheld. To do these things, courts have generally used The Restatement of Torts, which provides guidelines for trademark infringement based on the following tests:

Similarity of appearance may exist in cases such as the internationally known horseman trademark used by Polo Ralph Lauren and the double horseman trademark used by the United States Polo Association that has been challenged by Ralph Lauren.

Phonetic similarity was found in a suit in which Seycos watches were considered to have violated the trademark of Seiko watches because the names sounded so much alike.

Similarity of meaning is possible in cases like the one in which a fence company was denied the right to use the trademark Tornado because it was considered too similar in meaning to the existing Cyclone trademark for wire fences.

Channels of trade are used to determine if consumers might be confused by the same or similar name of a product sold in different markets. For example, both the Bigfoot trademark for snowmobile truck belts and Bigfoot for automobile tires were considered legal trademarks. On the other hand, Nutra Salt was seen as violating the trademark rights of Nutra Sweet because both products were sold to similar markets.

Directly competitive trademarks such as cellophane may take precedence over competitors who wish to use the term with other kinds of wrapping ...