Research

Trade mark infringement - legal overview

Introduction A trade mark is a word, logo or other sign which indicates the origin of goods or services to which it is applied to the consumer. Because consumers often seek out goods or services by reference to a particular trade mark, a trade mark is an important business asset. Trade marks can be registered to obtain maximum protection against their use by other parties (although unregistered trade marks can also be protected in some circumstances). This information sheet deals with rights in, and infringement of, registered trade marks. Infringement generally The Trade Marks Act 2002 sets out certain acts which, if done without the authorisation of a registered trade mark owner, will infringe a registered trade mark. These are use of:  A sign identical to the registered trade mark on or in relation to identical goods and/or services to those covered by the registration; A sign identical to the registered trade mark on or in relation to similar goods and/or services to those covered by the registration, if such use would be likely to deceive or cause confusion; or A sign similar to the registered trade mark on or in relation to any identical or similar goods and/or services, if such use would be likely to deceive or cause confusion;  A sign identical or similar to the registered trade mark in relation to any goods and/or services which are not similar to those covered by the registration, where the registered trade mark is well known in New Zealand and use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.

Use as a trade mark To amount to infringement, the allegedly infringing sign must be used “as a trade mark”. This includes use on goods themselves and in advertising or promotional material. Questions may arise as to whether a sign is used “as a trade mark” in circumstances where a defendant claims its use would not be taken by the consumer as showing a...