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Trademark infringement is a violation of the
exclusive right In Anglo-Saxon law, an exclusive right, or exclusivity, is a de facto, non-tangible prerogative existing in law (that is, the power (sociology), power or, in a wider sense, right) to perform an action or acquire a benefit and to permit or deny oth ...
s attached to a
trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property Intellectual property (IP) is a category of property Property is a system of rights that gives people legal control of valuable things, and also r ...

trademark
without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil
legal proceedingsLegal proceeding is an activity that seeks to invoke the power of a tribunal in order to enforce a law. Although the term may be defined more broadly or more narrowly as circumstances require, it has been noted that " e term ''legal proceedings'' inc ...
against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services. If the respective marks and products or services are entirely dissimilar, trademark infringement may still be established if the registered mark is well known pursuant to the
Paris Convention
Paris Convention
. In the United States, a cause of action for use of a mark for such dissimilar services is called
trademark dilution Trademark dilution is a trademark law concept giving the owner of a famous trademark Standing (law), standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthori ...
. In some jurisdictions a party other than the owner (e.g., a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.


Factors

Courts consider various factors in order to determine whether a trademark was infringed. * Whether the plaintiff has a valid trademark. A trademark can be valid because it is officially registered, or because it has a claim under common law. * Whether the trademark is being used by the defendant. * Whether the defendant's use of the mark is "in commerce." * Whether that use is connected to the sale, offer, distribution, or advertising of a product. * Whether the defendant's use of the trademark is likely to confuse consumers. This last factor, consumer confusion, is the main topic of debate in most cases.


Consumer confusion

Where the respective marks or products or services are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner. Likelihood of confusion is not necessarily measured by actual
consumer confusion Consumer confusion is a state of mind that leads to consumer A consumer is a person or a group who intends to order, orders, or uses purchased goods, products, or Service (economics), services primarily for personal, social, family, household and ...
if two products do not directly compete against each other but are in proximate markets. Then, to determine consumer confusion, a court may apply one of various factor tests. The primary test comes from
Ninth Circuit Court of Appeals The United States Court of Appeals for the Ninth Circuit (in case citation Case citation is a system used by legal professionals to identify past court case A legal case is in a general sense a dispute between opposing parties which may be ...
and is found in ''AMF, Inc v. Sleekcraft Boats'', 599 F.2d 341 (C.A.9) 1979. The Court there announced eight specific elements to measure likelihood of confusion: # Strength of the mark # Proximity of the goods # Similarity of the marks # Evidence of actual confusion # Marketing channels used # Type of goods and the degree of care likely to be exercised by the purchaser # Defendant's intent in selecting the mark # Likelihood of expansion of the product linesAMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979
/ref> Other Courts have fashioned their own tests for likelihood of confusion—like those announced in ''In re E.I. du Pont de Nemours & Co''., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)'','' known collectively as the ''DuPont'' factors.


Defenses

The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid ''exception'' (e.g., comparative advertising) or ''defence'' (e.g., laches) to infringement, or attack and cancel the underlying registration (e.g., for non-use) upon which the proceedings are based. Other defenses include genericness, functionality, abandonment, or
fair use Fair use is a doctrine Doctrine (from la, Wikt:doctrina, doctrina, meaning "teaching, instruction") is a codification (law), codification of beliefs or a body of teacher, teachings or instructions, taught Value (personal and cultural), prin ...
.


Globally

The ACTA trade agreement, signed in May 2011 by the United States, Japan, Switzerland, and the EU, requires that its parties add criminal penalties, including incarceration and fines, for copyright and trademark infringement, and obligated the parties to actively police for infringement.Miriam Bitton (2012
Rethinking the Anti-Counterfeiting Trade Agreement’s Criminal Copyright Enforcement Measures
The Journal of Criminal Law & Criminology 102(1):67-117
In many countries (but not in countries like the United States, which recognizes common law trademark rights), a trademark which is ''not'' registered cannot be "infringed" as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner may be able to commence proceedings under the common law for
passing off In common law countries such as the United Kingdom The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain,Usage is mixed. The Guardian' and Telegraph' use Britain as a synonym for ...
or
misrepresentation In common law In law, common law (also known as judicial precedent or judge-made law, or case law) is the body of law created by judges and similar quasi-judicial tribunals by virtue of being stated in written opinions. ''Black's Law Dictionary' ...
, or under legislation which prohibits
unfair business practices Unfair business practices encompass fraud In , fraud is to secure unfair or unlawful gain, or to deprive a victim of a legal right. Fraud can violate (e.g., a fraud victim may sue the fraud perpetrator to avoid the fraud or recover monetar ...
. In some jurisdictions, infringement of
trade dress Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade dress is an aspect of trademark law A trademark (also w ...
may also be actionable.


Notable cases

* '' Facebook, Inc. v. Power Ventures, Inc.'' * '' Google, Inc. v. American Blind & Wallpaper Factory, Inc.'', in which Google's AdWords program was alleged to be in violation of trademark * '' Rescuecom Corp. v. Google Inc.'', in which the use of trademarks in Google's AdWords program was found to be a "use in commerce" under the Lanham Act * '' Network Automation, Inc. v. Advanced Systems Concepts, Inc.'', in which the use of a competitor's trademark as an Internet advertisement search keyword was found to not constitute trademark infringement * ''
College Network, Inc. v. Moore Educational Publishers, Inc. ''College Network, Inc. v. Moore Educational Publishers, Inc.'', Case citation, No. 09-50596 (5th Cir. 2010) was an Non-publication, unpublished appellate level case in the United States Court of Appeals for the Fifth Circuit, Fifth Circuit that up ...
'', in which the use of a competitor's trademark does not qualify as a "use in commerce" is upheld * '' Polaroid Corp. v. Polarad Elects.''


See also

*
Madrid Protocol Madrid (, ) is the capital and most-populous city of Spain , * gl, Reino de España, * oc, Reiaume d'Espanha, , , image_flag = Bandera de España.svg , image_coat = Escudo de España (mazonado).svg , national_motto = , na ...
*
Canadian trademark law Canadian trademark law provides protection to marks by statute under the ''Trademarks Act'' and also at common law. Trademark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those ...
* Exhaustion of rights *
Passing off In common law countries such as the United Kingdom The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain,Usage is mixed. The Guardian' and Telegraph' use Britain as a synonym for ...
*
Trade dress Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade dress is an aspect of trademark law A trademark (also w ...
*
Patent infringement A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of years in exchange for publishing an sufficiency of disclosure, enabling discl ...
*
Copyright infringement Copyright infringement (at times referred to as piracy) is the use of works Works may refer to: People * Caddy Works Pierce "Caddy" Works (January 2, 1896 – July 19, 1982) was an American basketball and baseball coach. He was the head b ...
*
Brand protection Brand protection is the process and set of actions that a right holder undertakes to prevent third parties from using its intellectual property Intellectual property (IP) is a category of property Property is a system of rights that give ...


References


External links


World Intellectual Property Organization

Madrid Protocol Text of Treaty


* ttp://www.uspto.gov/web/offices/tac/tmlaw2.html#_Toc52344333 Section 43(a) of the Lanham Act (15 U.S.C. 1125(a))
The Trade Mark Act (UK)

Study of Alleged Trademark Infringement Against Global Brands in Internet Search Advertising



Trademark
{{DEFAULTSORT:Trademark Infringement Infringement Commercial crimes