{"id":138096,"date":"2026-04-08T12:45:17","date_gmt":"2026-04-08T12:45:17","guid":{"rendered":"https:\/\/my.legal500.com\/guides\/?post_type=comparative_guide&#038;p=138096"},"modified":"2026-04-08T12:45:17","modified_gmt":"2026-04-08T12:45:17","slug":"united-kingdom-trademark-disputes","status":"publish","type":"comparative_guide","link":"https:\/\/my.legal500.com\/guides\/chapter\/united-kingdom-trademark-disputes\/","title":{"rendered":"United Kingdom: Trademark Disputes"},"content":{"rendered":"","protected":false},"template":"","class_list":["post-138096","comparative_guide","type-comparative_guide","status-publish","hentry","guides-trademark-disputes","jurisdictions-united-kingdom"],"acf":[],"appp":{"post_list":{"below_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Gowling WLG<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2018\/11\/Gowling-WLG-logo.jpg\"\/><\/span><\/div>"},"post_detail":{"above_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Gowling WLG<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2018\/11\/Gowling-WLG-logo.jpg\"\/><\/span><\/div>","below_title":"<span class=\"guide-intro\">This country specific Q&amp;A provides an overview of Trademark Disputes laws and regulations applicable in United Kingdom<\/span><div class=\"guide-content\"><div class=\"filter\">\r\n\r\n\t\t\t\t<input type=\"text\" placeholder=\"Search questions and answers...\" class=\"filter-container__search-field\">\r\n\t\t\t<\/div>\r\n\r\n\t\t\t\r\n\r\n\r\n\t\t\t<ol class=\"custom-counter\">\r\n\r\n\t\t\t\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">To represent a client before Court in respect of a potential trademark infringement matter, do you require a Power of Attorney \u2013 and if so, what are the execution formalities required by your courts?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>To represent a client in litigation, a solicitor (or other legal professional) does not require a specific Power of Attorney, but must be retained by the client.<\/p>\n<p>In terms of advocacy at court, barristers, solicitors (with higher rights of audience where necessary) and registered trade mark attorneys (with the appropriate litigation and\/or advocacy certificates where necessary) are able to represent clients before Court in trade mark infringement matters and do not need a Power of Attorney to do so. The legal professional representing the party before Court only needs to establish their professional status as an advocate.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it a requirement in your jurisdiction to send a cease and desist letter to a potential infringer before commencing proceedings for infringement? What are the consequences for a trademark owner who chooses not to send a pre-action letter?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Before issuing trade mark infringement proceedings, parties are expected to comply with the Civil Procedure Rules (CPR) Practice Direction on Pre-Action Conduct and Protocols. This provides that parties should exchange sufficient correspondence and information including for the parties to understand each other&#8217;s position, make decisions about how to proceed, try to settle issues without proceedings and consider a form of alternative dispute resolution. By way of illustration, the Practice Direction states that this usually includes &#8220;the claimant writing to the defendant with concise details of the claim [including] the basis on which the claim is made, a summary of the facts, what the claimant wants from the defendant, and if money, how the amount is calculated&#8221;, i.e. a cease and desist letter.<\/p>\n<p>Failure to do so could lead to the Court staying proceedings while steps are taken to comply with the Practice Direction, or in some cases the defending party has a longer period to file its Defence. The Court can also impose sanctions, primarily leading to adverse costs consequences such as attracting an award of indemnity costs against the claimant, and\/or affecting the interest on any sum of money awarded to the claimant (such as depriving interest for a particular period or awarding it at a lower rate). Therefore, while sending a cease and desist letter is not mandatory, it is advisable to do so.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, is there a risk that a pre-action letter could give rise to claim against the trademark owner for unjustified threats? What steps should a trademark owner take to ensure any cease and desist letter does not expose the trademark owner to any liability.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>There is a risk that a pre-action letter could give rise to a claim against the trade mark owner for unjustified threats under Section 21 Trade Marks Act 1994 (as amended by the Intellectual Property (Unjustified Threats) Act 2017. To mitigate this risk, it is essential for the trade mark owner to ensure that any cease and desist letter is carefully drafted and complies with the statutory provisions governing actionable threats. This is true even if the threat is conditional or implied, as the term &#8220;threat&#8221; covers any intimation that would convey to a reasonable person that trade mark rights exist (whether registered or for which an application for registration has been published) and are intended to be enforced in respect of act done in the UK (or which, if done, would be done in the UK). A letter from solicitors that constitutes a warning of future proceedings could be considered an threat actionable by anyone aggrieved by the threat but the solicitor is not liable themselves if they were acting on instructions (see further below).<\/p>\n<p>Proceedings in respect of an actionable threat may be brought against the person who made the threat for a declaration that the threat is unjustified, an injunction against the continuance of the threat, and damages in respect of any loss sustained by the aggrieved person due to the threat (Section 21C(1), Trade Marks Act 1994). It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the trade mark (Section 21C(2), Trade Marks Act 1994).<\/p>\n<p>To avoid liability for unjustified threats, trade mark owners should ensure that any cease and desist letter containing a threat of infringement proceedings:<\/p>\n<p>i. relates to an alleged act of infringement that is not considered actionable as an unjustified threat under Section 21A(2), Trade Marks Act 1994. These acts are applying, or causing another person to apply, a sign to goods or their packaging; importing, for disposal, goods to which, or to the packaging of which, a sign has been applied; or supplying services under a sign; or<\/p>\n<p>ii. is sent to a person who has done or intends to do one of the above acts, and the threat relates to an infringement alleged to consist of doing anything else in relation to the goods or packaging or services (Sections 21A(4) and (5), Trade Marks Act 1994); or<\/p>\n<p>iii. if not an express threat of infringement, meets the criteria to be considered a &#8220;permitted communication&#8221; under Section 21B, Trade Marks Act 1994. A communication is permitted if it is made for a permitted purpose, contains only information necessary for that purpose, and the person making the communication reasonably believes the information is true. Permitted purposes include giving notice that the trade mark exists, discovering whether or by whom the trade mark has been infringed, and notifying someone of a right in or under the trade mark where the recipient&#8217;s awareness of the right is relevant to the potential proceedings.<\/p>\n<p>Additionally, the Intellectual Property (Unjustified Threats) Act 2017 provides further clarification and protections, such as preventing threats being brought against professional advisers acting in a professional capacity on the instructions of another person where the professional adviser identifies in the communication the person on whose instructions they are acting.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it mandatory for the parties to have attempted mediation or other alternative dispute resolution proceedings prior to commencing infringement proceedings? If so, what is the minimum expectation?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It is not mandatory for parties to have attempted mediation or other alternative dispute resolution (ADR) proceedings prior to commencing infringement proceedings. However, there are notable guidelines and judicial expectations that encourage \u2013 and in some cases now require \u2013 parties to consider ADR.<\/p>\n<p>As mentioned in relation to question 2 above, before commending infringement proceedings, parties are expected to comply with the CPR Practice Direction on Pre-Action Conduct and Protocols. This provides that parties should exchange sufficient correspondence and information to comply with certain objectives, including to &#8220;try to settle the issues without proceedings&#8221; and to &#8220;consider a form of [ADR] to assist with settlement&#8221;. Consequences of non-compliance include the Court staying proceedings while steps are taken to comply, and the imposition of sanctions such as adverse consequences. Nevertheless, the expectation is low if parties are only required to exchange enough information to consider ADR, but are not required to take active steps to enter into any form of ADR prior to commencing infringement proceedings.<\/p>\n<p>Nevertheless it is important to note that the Court may nevertheless order engagement in ADR at a later stage. The Court of Appeal&#8217;s landmark decision in Churchill v Merthyr Tydfil County Borough Council [2023] EWCA Civ 1416 found that the Court had the power to order parties&#8217; engagement in ADR and a &#8216;proportionate&#8217; pre-trial stay did not impact on parties&#8217; rights under Article 6 of the European Convention on Human Rights (right to a fair trial). Subsequent amendments to the CPR in line with that case took effect on 1 October 2024, which strongly promote the use of ADR.<\/p>\n<p>In particular, CPR 1.4(2)(e) now provides that the Court&#8217;s duty of active case management includes &#8220;ordering or encouraging the parties to use, and facilitating the use of, alternative dispute resolution&#8221;, and CPR rule 3.1(2)(o) expressly grants the court a general power to &#8220;order the parties to engage in alternative dispute resolution&#8221;. Furthermore, under CPR 44.2(5)(e), the Court may take into account whether a party failed to comply with an order for ADR, or unreasonably failed to engage in ADR, when deciding what order to make about costs.<\/p>\n<p>In a recent trade mark case, DKH Retail Ltd (Superdry) v City Football Group Ltd [2024] EWHC 3231, despite the defendants&#8217; objections, the High Court ordered the parties to engage in mediation and this resulted in a settlement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are claims for trademark infringements heard before a general commercial Court or a specialist Court focused on Intellectual Property disputes? Are trademark infringement claims decided by a judge or by a jury?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Claims for trade mark infringement are primarily heard before specialist courts focused on intellectual property disputes rather than general commercial courts. Specifically, claims for trade mark infringements are primarily brought in the Chancery Division of the High Court or the Intellectual Property Enterprise Court (IPEC), which is a specialised court that is particularly suitable for intellectual property litigation in which the financial value of the claim is under \u00a3500,000.<\/p>\n<p>Trade mark infringement claims are decided by a judge, not by a jury. Most claims for trade mark infringement heard before the Chancery Division of the High Court are dealt with by specialist intellectual property judges. Multi-track cases in the IPEC (broadly speaking, cases where the compensation sought exceeds \u00a310,000 and are not considered suitable for the small claims track) are heard by the Presiding Judge of the IPEC, His Honour Judge Hacon, or by one of a number of deputy judges and recorders (including HHJ Melissa Clark), all of whom are intellectual property specialists. Overall responsibility for the Business and Property Courts, which includes the Intellectual Property List and the IPEC, lies with the Chancellor of the High Court, a position held since 1 November 2025 by Sir Colin Birss, who is himself a former IPEC judge and IP specialist, and a current Court of Appeal judge.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is there a time limit for commencing trademark infringement proceedings once the facts giving rise to the infringement are known to the trademark owner. After how long would such a claim be time-barred? What action would a trade mark owner have to know to give rise to such a claim being time-barred (for example, is it knowing that a mark in question is in use or is it knowing that a trade mark application has been filed and\/or registered?)<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The relevant limitation period for bringing a trade mark infringement claim is six years from the date of each individual infringing act, governed by section 2 of the Limitation Act 1980 which provides that &#8220;an action founded on tort shall not be brought after the expiration of six years from the date on which the cause of action accrued&#8221;. For ongoing or continuing infringement \u2014 where the same infringing conduct persists over an extended period \u2014 each act of infringement gives rise to a separate cause of action, meaning that damages can be recovered for all infringing acts committed within the six years prior to filing the claim, but acts of infringement occurring before that would be time-barred.<\/p>\n<p>This is also reflected in Section 18, Trade Marks Act 1994, which specifically addresses a six-year time period for the availability of the remedy of delivery up of infringing goods, materials or articles, except that if during any part of that period the trade mark owner is under a disability or prevented by fraud or concealment from discovering the facts entitling them to apply for an order, an application can be made within six years of the date on which they ceased to be under a disability or could with reasonable diligence have discovered the facts.<\/p>\n<p>The trade mark owner&#8217;s knowledge of the infringement is not relevant to the running of the limitation period. The date of knowledge (as defined in Section 14, Limitation Act 1980) does not apply to claims relating to infringement of IP rights. It is not necessary for the trade mark owner to have known of infringing use, or that a conflicting trade mark application has been filed or registered, for the clock to begin.<\/p>\n<p>Nevertheless, the trade mark owner&#8217;s knowledge becomes relevant when considering the &#8220;acquiescence defence&#8221;, which is a complete defence to trade mark infringement where a trade mark owner is shown to have been aware of the use of an allegedly infringing later mark and to have effectively consented to that use for five years.<\/p>\n<p>Therefore, if a trade mark owner discovers long-running, historical infringement, they should file proceedings promptly since they will only be able to recover damages relating to the previous six years of infringing actions, and additionally because if they do not bring proceedings within five years of knowing about the defendant&#8217;s own later filed trade mark (which has been used throughout that time), they may be found to have acquiesced.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction does the law protect unregistered trademarks of any kind, including by way of passing off, unfair competition or protection of trade dress. What are the criteria for their subsistence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In England and Wales, there is no specific legal action for the protection of unregistered trade marks by way of a general law of &#8220;unfair competition&#8221; or protection of trade dress. However, the law does protect unregistered trade marks through the tort of &#8220;passing off&#8221;. The principle that underlies passing off was summarised by Lord Oliver as &#8220;no man may pass off his goods as those of another.&#8221;<\/p>\n<p>The criteria for establishing a passing off claim consist of three elements:<\/p>\n<p>1. Goodwill: The claimant must demonstrate that there is goodwill or reputation attached to the goods or services they supply, which is recognised by the purchasing public through the identifying &#8216;get-up&#8217; (such as a brand name, trade description, or packaging).<\/p>\n<p>2. Misrepresentation: The claimant must show that the defendant has made a misrepresentation to the public, leading them to believe that the goods or services offered by the defendant are those of the claimant. This misrepresentation does not need to be intentional.<\/p>\n<p>3. Damage: The claimant must prove that they have suffered or are likely to suffer damage to their goodwill or reputation due to the erroneous belief caused by the defendant&#8217;s misrepresentation.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction will the Court hear claims for registered trademark infringement in parallel with claims for passing off,unfair competition, infringement of trade dress or other misleading advertising, or does a claimant need to bring such claims in a separate cause of action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The court will hear claims for registered trade mark infringement in parallel with claims for passing off, or they can be combined in the same action. The reasoning for combining the two is that the statutory cause of action for infringement of registered trade marks is a development of the common law relating to passing off. Both causes of action are directed at the same wrong, which is the exploitation by one party of commercial goodwill properly belonging to another.<\/p>\n<p>In England and Wales, there are laws and regulations prohibiting misleading advertising and non-permitted comparative advertising. However, these laws and regulations do not create a direct right of action for trade mark owners. Instead, certain authorities, primarily Trading Standards and the Competition and Markets Authority (CMA), may initiate proceedings on behalf of trade mark owners, and can seek court orders preventing the publication of unlawful advertising.<\/p>\n<p>In addition, the Advertising Standards Authority (ASA) is the UK&#8217;s independent regulator of advertising across all media, and adjudicates cases concerning allegedly comparative and misleading advertising under the Committees of Advertising Practice (CAP) Codes. The ASA publishes adjudication reports on its website, which are often reported on by the media and can have a powerful impact due to the adverse publicity that can result from a negative adjudication. However, the ASA does not have power to grant injunctions, levy fines or award compensation, and will generally not investigate a complaint by a trade mark owner about a competitor&#8217;s advertisement if the advertisement is also the subject of legal action.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, do your Courts share jurisdiction with your Trade Mark Office, such that parties need to seek to seize the forum they prefer first in time, or does the Court take precedence and intervene to stay or transfer any live Registry proceedings (for example relating to invalidity or revocation of registered trade mark) which may overlap with an issued infringement claim and related counterclaim?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The courts and the UK Intellectual Property Office (UKIPO) share jurisdiction in relation to certain trade mark matters. Invalidity and revocation proceedings can be brought before the courts or the UKIPO. However, only the courts have jurisdiction in relation to trade mark infringement claims.<\/p>\n<p>In the event of concurrent proceedings before the UKIPO and a court, the UKIPO will often agree to stay proceedings in deference to the court. However, if necessary, the court can intervene to stay or transfer proceedings to ensure efficient use of resources and avoid unnecessary duplication.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the defendant has a counterclaim for invalidity or cancellation of the registered trademark being asserted against it (either on the basis of earlier rights or as a result of non-use by the trademark proprietor), does the counterclaim become part of the infringement action, so that both issues are heard by the same Court within a single action, with the Court making a determination at its conclusion, or are the validity issues bifurcated and heard in separate parallel proceedings? If in your jurisdiction validity issues are bifurcated, what are the practical consequences of this from a timing perspective? For example, does this mean that a Court will stay the infringement claim and proceed with the validity attack first to avoid finding a trademark infringed, only to have a separate Court find the trademark invalid at a later date?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>There is no bifurcation of validity issues in England and Wales. When the defendant has a counterclaim for invalidity or cancellation of the registered trade mark being asserted against it, the general practice is for both issues to be heard by the same court within a single action. This approach ensures that the court can make a determination on both the infringement and the validity of the trade mark at the conclusion of the proceedings.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does a defendant have a defence of using a mark honestly and concurrently available to them?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Honest concurrent use is not a stand-alone defence available to defendants in trade mark infringement proceedings in England and Wales. As clarified by the Court of Appeal in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454, honest concurrent use is, rather, a factor to be considered as part of the global assessment of infringement.<\/p>\n<p>Once a claimant has established a case of infringement, the burden shifts to the defendant to show that, by its honest concurrent use, there was no adverse effect on the functions of the registered trade mark.<\/p>\n<p>In particular, honest concurrent use is relevant to the assessment of whether there is a likelihood of confusion in claims brought pursuant to Section 10(2) Trade Marks Act 1994. It is also relevant in the assessment of injury claims alleging unfair advantage, detriment to distinctiveness and\/or detriment to repute pursuant to Section 10(3) Trade Marks Act.<\/p>\n<p>In terms of temporal considerations, the general rule is that the relevant date for assessing honest concurrent use is that when the use commenced. However, a use which is initially infringing could cease to be so if the proprietor of the registered trade mark takes no action, both the trade mark and the sign are used in parallel for a long period of time, as a result of which the relevant class of consumers understand that both identify different origins.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">When considering the validity of a registered trade mark, does the Court consider whether the trade mark has been registered in bad faith? If so, what actions would indicate this bad faith?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>When considering validity of a registered trade mark, the Court does consider whether it was registered in bad faith. Section 3(6) of the Trade Marks Act 1994 provides that &#8220;a trade mark shall not be registered if or to the extent that the application is made in bad faith&#8221; and Section 47 permits a declaration of invalidity if the mark was registered in breach of Section 3(6). A finding of partial invalidity can also be made on these grounds if the bad faith exists only in respect of some of the goods or services in which the trade mark is registered.<\/p>\n<p>The UK Supreme Court&#8217;s decision in SkyKick UK Ltd v Sky Ltd [2024] UKSC 36 clarified the test and lowered the evidential threshold to establish a finding of bad faith.<\/p>\n<p>Conduct which may indicate bad faith includes:<\/p>\n<p>&#8211; Filing a trade mark application without a genuine intention to use the mark in connection with the specified goods or services, particularly where overly broad or general terms are used in the specification. An applicant does not need to have a settled intention at the time of making their application, but a lack of intention to establish or explore potential business under the mark, together with an intention to enforce the mark across the goods\/services in which it is registered, demonstrates an intention to use right in a way that falls outside of the essential functions of a trade mark;<\/p>\n<p>&#8211; Registering marks as &#8216;legal weapons&#8217; in order to bring or threaten infringement proceedings, to block third party applications or use of a mark (in relation to which knowledge of a third party&#8217;s use of an identical or similar mark can be relevant) and\/or to obtain unjustified compensation;<\/p>\n<p>&#8211; Serial filing as part of a pattern of abusive behaviour, such as in order to bring enforcement proceedings against legitimate traders, or strategic re-filings made in order to overcome vulnerability for non-use;<br \/>\n&#8211; An inability to explain the commercial rationale behind a trade mark application, for example where the goods or services are unrelated to the applicant&#8217;s activities.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the main objective in commencing infringement proceedings is to secure an injunction, is a claimant required to state how much their claim is worth at the point their claim is issued?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A claimant seeking an injunction in trade mark infringement proceedings is not required to state the monetary value of their claim at the point that their claim is issued. The requirement to include a statement of value applies where the claimant is making a claim for money. A trade mark infringement action, particularly when the objective is securing an injunction, is not considered a claim for money. The Court has held that the rules concerning claims for money do not apply to non-money claims like those seeking injunctive relief.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it possible to seek a preliminary injunction in your jurisdiction? If so, what is the criteria a trademark owner needs to establish and is there a bond or other undertaking in damages payable to compensate the defendant if the Court finds no infringement following a substantive hearing?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, it is possible to seek a preliminary (interim) injunction in relation to trade mark infringement. The criteria for granting such an injunction, as established in American Cyanamid Co (No 1) v Ethicon Ltd [1975] UKHL 1, include:<\/p>\n<p>1. Whether there is a serious issue to be tried: The court must be satisfied that there is a serious issue to be tried. This means the claimant must show that the case is not frivolous or vexatious, and there is a real prospect of success.<\/p>\n<p>2. Balance of convenience: The court will then assess the balance of convenience, considering:<\/p>\n<p>3. Status quo: If the balance of convenience does not clearly favour one party, the court may consider maintaining the status quo until the final hearing.<\/p>\n<p>As mentioned above, when a court grants a preliminary injunction, it typically requires the claimant to provide a cross-undertaking in damages. This is a commitment by the claimant to compensate the defendant for any losses incurred if it is later determined that the injunction should not have been granted.<\/p>\n<p>i. if the preliminary injunction is not granted, whether damages would be an adequate remedy for the claimant if it ultimately succeeds at trial. If damages would be an adequate remedy for the claimant, then a preliminary injunction will not normally be granted. The claimant must show that monetary compensation at trial would be insufficient to repair the harm caused by the defendant&#8217;s continued activities pending trial;<\/p>\n<p>ii. if the preliminary injunction is granted, whether the claimant&#8217;s cross-undertaking in damages will provide adequate protection for the defendant if the latter ultimately succeeds at trial and it is found that the injunction was wrongly granted. If the cross-undertaking damages would not offer adequate protection for the defendant, then a preliminary injunction will not normally be granted;<\/p>\n<p>iii. more generally, whether the harm to the claimant if the injunction is refused outweighs the harm to the defendant if it is granted.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is a licensee (whether exclusive or non-exclusive) of a registered trademark entitled to commence proceedings for trademark infringement? Does the trademark proprietor need to be joined as a party to the proceedings, and does it have an effect whether the licensee is registered before the local Trademark Registry?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The entitlement of a licensee to commence proceedings for trade mark infringement depends on whether the licensee is exclusive or non-exclusive.<\/p>\n<p>An exclusive licensee may bring infringement proceedings in their own name if:<\/p>\n<p>i. the exclusive licensee calls on the owner of the registered trade mark to take infringement proceedings, and the owner refuses to do so, or fails to do so within two months after being called upon (Section 30(2) and (3) Trade Marks Act 1994);<\/p>\n<p>ii. the licence provides that the exclusive licensee has the same rights and remedies as if the licence were an assignment, allowing the exclusive licensee to bring infringement proceedings, against any person other than the owner, in their own name (Section 31(1) Trade Marks Act 1994).<\/p>\n<p>A non-exclusive licensee may bring proceedings for infringement only with the consent of the owner of the registered trade mark (Section 30(1A) Trade Marks Act 1994). This requirement ensures that non-exclusive licensees cannot unilaterally initiate legal action without the involvement of the trade mark owner.<\/p>\n<p>In both cases, the involvement of the trade mark owner is necessary. The owner must be joined as a claimant or added as a defendant in the proceedings unless the court grants leave otherwise (Section 30(4) Trade Marks Act 1994). This requirement does not hinder the granting of interim remedies on an application by the licensee alone. In addition, a licensee (exclusive or non-exclusive) who has suffered loss can intervene in infringement proceedings brought by the proprietor for the purpose of recovering that loss (Section 30(6A) Trade Marks Act).<\/p>\n<p>The grant of a trade mark licence is a registrable transaction pursuant to Section 25(2)(b) Trade Marks Act 1994. Until an application is made to register the particulars of the licence, the licensee cannot exercise its statutory rights and remedies under Sections 30 and 31 Trade Marks Act 1994 (Section 25(3)(b) Trade Marks Act 1994). Nevertheless, the Court recently confirmed in Lifestyle Equities v SportsDirect.com Retail [2025] EWHC 1417 (Ch) that the trade mark owner can still claim losses and recover damages suffered by licensees and sub-licensees. It also clarified that there is no statutory time limit for registering a licence to obtain the protection afforded by Section 30 Trade Marks Act 1994, so late registration can &#8216;cure&#8217; the issue.<\/p>\n<p>However, registering the transaction more than six months after the date of the licence can still have costs implications for the licensee. Section 25(4) Trade Marks Act 1994 states that the court will not award the licensee costs unless either an application for registration is made before the end of the six-month period, or the court is satisfied that it was not practicable for the application to be made before the end of that period and it was made as soon as practicable to do so.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the claim for trademark infringement is premised on similarity between the defendant\u2019s mark and the trademark owner\u2019s registered mark, does the proprietor need to demonstrate that confusion has occurred or simply that there is a risk of confusion? What is the minimum standard required to secure a finding of infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The owner of a registered trade mark does not need to demonstrate actual confusion to secure a finding of infringement based on similarity between the defendant&#8217;s mark and the registered mark. Instead, it is sufficient to show a risk of confusion: a person infringes a registered trade mark if they use a sign in the course of trade where, because the sign is identical or similar to the trade mark and is used in relation to goods or services identical or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark (Section 10(2), Trade Marks Act 1994).<\/p>\n<p>The likelihood of confusion must be appreciated globally, taking all relevant factors into account, and judged through the eyes of the average consumer who, at a minimum, is deemed to be reasonably well informed, circumspect, and observant. The court must identify the sign actually used by the defendant and compare it to a notional and fair use of the mark in relation to all goods and services for which it is registered, assessing whether there is a risk that the average consumer might think the goods or services come from the same or economically linked undertakings.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible to rely on post-sale confusion as a means of securing a finding of trade mark infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Following the Supreme Court&#8217;s recent decision in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25, post-sale confusion has been confirmed as a legitimate and free-standing basis for trade mark infringement under Section 10(2) Trade Marks Act 1994, even where there is no likelihood of confusion at the point of sale. In assessing similarity, the court may take into account realistic and representative post-sale &#8220;extraneous circumstances&#8221;, including the viewing angles at which consumers encounter branded goods after purchase. However, the post-sale circumstances being considered must be &#8220;realistic and representative&#8221;. The Court also provided that the post-sale confusion need not impact the average consumer&#8217;s subsequent transaction decision, the likelihood of confusion alone was the damage.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction what type of disclosure or discovery is typically ordered by the Court in respect of trademark infringement actions from both parties?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In trade mark infringement actions, courts typically order a process called &#8220;disclosure&#8221; (equivalent to &#8220;discovery&#8221; in other jurisdictions). This process allows parties to obtain evidence from each other after filing their pleadings. Traditionally, &#8220;standard&#8221; disclosure required parties to conduct a reasonable search for all relevant documents, including those that support or adversely affect a case, while excluding privileged materials.<\/p>\n<p>Due to the increasing complexity and cost of managing electronic documents, a pilot scheme was introduced in the Business and Property Courts (including the Chancery Division of the High Court and the IPEC) in 2019, and made permanent in 2022. This scheme provides courts with the flexibility to tailor the scope of disclosure to the specifics of each case. It also imposes detailed obligations on parties, including a structured dialogue to set the scope of disclosure.<\/p>\n<p>Additionally, courts can issue pre-trial search and seizure orders against both parties and third parties. They can also order the disclosure of documents or information from third parties who are inadvertently involved in the alleged infringer&#8217;s wrongdoing.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What type of expert evidence is permitted by the Court in your jurisdiction? Does the Court accept consumer surveys and are there specific rules about how consumer surveys are conducted. Do the parties need to request prior permission from the Court to adduce survey evidence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Expert evidence is generally permitted when it provides the court with specialised knowledge that is outside the judge&#8217;s expertise and can assist in understanding technical issues related to the case. Expert evidence must be substantive and not merely opinion-based. CPR Part 35 provides that expert evidence should be independent, relevant, and necessary for resolving the proceedings, with a duty to the court that overrides any obligations to the instructing party.<\/p>\n<p>The CPR contains further rules on expert evidence in different kinds of proceedings. For example, trade evidence from individuals in the relevant trade could be treated as expert evidence when it includes opinions on market behaviour, provided it complies with CPR Part 35.<\/p>\n<p>The evidence permitted by the courts includes consumer surveys. However, there are specific rules governing the admissibility and conduct of such surveys. Survey evidence must generally be of real value to the court and proportionate to the cost involved in producing it. The reliability and methodological adequacy of the survey are crucial factors in determining its admissibility. The Whitford guidelines, established in Imperial Group Plc v Philip Morris Ltd (1984) R.P.C. 293, outline the requirements for a valid survey. These guidelines include ensuring a relevant cross-section of the public is interviewed, the survey size is statistically significant, full disclosure of the survey methodology, non-leading questions, recording exact answers, and providing interviewer instructions.<\/p>\n<p>Prior permission from the court is required to adduce survey evidence, and it is often reluctant to grant such permission. The permission application should outline the proposed survey&#8217;s methodology and costs. Surveys should not be admitted unless they are likely to make a real difference at trial, and any application to conduct a survey must typically include the results of a pilot study and an estimate of the costs involved. If permission is granted, the applicant may conduct a full survey and seek permission to adduce expert evidence about the survey results. This ensures that the evidence is scrutinised for its potential value before significant costs are incurred.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Does evidence submitted by your client in trademark infringement proceedings have to be accompanied with a statement of truth or other similar declaration?  Which party is typically responsible for signing the statement of truth (or similar), the entity itself or the entity's representatives?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, CPR 22.1(1)(b) stipulates that evidence (in the form of witness statements) submitted by a client must be accompanied by a statement of truth by the witness. This requirement ensures that the evidence is verified and the person providing it acknowledges its accuracy and truthfulness. The statement of truth is a formal declaration that the facts stated in the document are true to the best of the knowledge and belief of the person making the statement. Under CPR 22.3, a failure to verify a witness statement by way of a statement of truth may lead to the court directing that it is not admissible as evidence. The required form of the statement of truth for witness statements is dictated by CPR Practice Direction 2.2:<br \/>\n&#8220;I believe that the facts stated in this witness statement are true. I understand that proceedings for contempt of court may be brought against anyone who makes, or causes to be made, a false statement in a document verified by a statement of truth without an honest belief in its truth.&#8221;<\/p>\n<p>Documents relied upon are typically put into evidence by including reference to them in a witness statement which will attest to their veracity and which must be supported by a statement of truth as above.<\/p>\n<p>The statement of truth on the Particulars of Claim can be signed by a person nominated by the party, such as a director, or by the legal representative of the party, provided that whoever signs the statement of truth is able to confirm that the party believes the contents to be true.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible for a claimant to seek summary judgment and\/or strike out of an infringement claim? What are the legal criteria for a Court to grant summary judgment?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, it is possible for a claimant to seek summary judgment for a trade mark infringement claim. The legal criteria for a court to grant summary judgment are outlined in the CPR Part 24. In brief, the court will grant a summary judgment if:<\/p>\n<p>i. it considers that the claimant has no real prospect of succeeding on the claim or issue, or that the defendant has no real prospect of successfully defending the claim or issue; and<\/p>\n<p>ii. there is no other compelling reason why the case or issue should be disposed of at trial.<\/p>\n<p>This procedure aims to ensure the efficient and cost-effective resolution of suitable cases without the need for a full trial.<\/p>\n<p>It is also possible to seek early determination of a case by way of striking out the claim or defence (or part of it) under CPR Part 3.4(2)(a) if it discloses no reasonable grounds for bringing or defending the claim.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How long does it typically take to reach judgment in a trademark infringement action from issue of the claim, through to first instance decision? What is the lower and upper range of legal costs for such an action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The duration of a claim in the IPEC is typically six to 12 months from the issuance of the claim to judgment. Factors influencing the duration are case complexity, court schedules and procedural matters.<\/p>\n<p>Costs in the IPEC can vary between a lower range of \u00a350,000 to \u00a3150,000 for straightforward cases, to an upper range of up to \u00a3300,000 for more complex cases. However, as of October 1, 2022, the recoverable costs are capped at \u00a360,000 for liability and \u00a330,000 for damages inquiries. Damages recovery is limited to \u00a3500,000.<\/p>\n<p>The duration of a claim in the Chancery Division of the High Court is generally 12 to 24 months to reach a first instance decision. Factors influencing the duration are the complexity of the case, the volume of evidence and court availability.<\/p>\n<p>Costs in the Chancery Division can vary between a lower range starting at \u00a3195,000 for less complex cases, to a higher range of exceeding \u00a31.5 million for intricate or high-value disputes. Typically, the prevailing party can recover 60% to 80% of their legal costs from the losing party. There is no cap on damages in the High Court.<\/p>\n<p>These figures are general estimates. Actual costs and durations can vary significantly based on specific case details, legal strategies, and unforeseen procedural developments.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a first instance decision, is it possible for either party to appeal the decision? What are the grounds upon which an appeal can be lodged? Is it necessary to request permission to appeal, or are appeals automatically permissible? If either party file an appeal, is the enforcement of the first instance decision stayed pending the outcome of the appeal?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Either party may seek permission to appeal a first instance decision. The grounds for appealing the decision generally include errors of law, procedural irregularities, or a conclusion that is outside the bounds within which reasonable disagreement is possible. The appeal process is a review rather than a rehearing.<\/p>\n<p>The general rule is that permission to appeal must be sought, and permission will only be granted if the court considers that the appeal would have a real prospect of success or there is some other compelling reason why the appeal should be heard. An application for permission to appeal can be made to the lower court at the hearing where the decision was made or (if refused) can also be made to the appellate court.<\/p>\n<p>For appeals from the Court of Appeal to the Supreme Court, different rules apply.<\/p>\n<p>The enforcement of the first instance decision is not automatically stayed pending an appeal. A party may request a stay, and the court will decide whether to grant it based on the circumstances of the case.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the parties have been involved in a dispute before the local Trademark Office, what relevance does this have on later infringement proceedings? For example where trademark owner (A) may have already sought to oppose the registration of a third party (B\u2019s) mark in proceedings before the local Trade Mark Office, is the trademark owner estopped from seeking invalidity of a registered trade mark where its opposition failed where the invalidity action is based on the same grounds as the unsuccessful opposition?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The involvement of parties in a dispute before the UKIPO can have significant implications for later infringement proceedings, particularly regarding the doctrines res judicata (a doctrine which prevents the re-litigation of claims or issues already decided by a competent court) and the Henderson v Henderson abuse of process principle (by which a party is required to present their entire case in legal proceedings whereas raising a further line of argument in subsequent proceedings, which could and should have been raised earlier, constitutes an abuse of process). These doctrines can estop parties from re-litigating matters that have already been adjudicated.<\/p>\n<p>Pre-grant opposition proceedings before the UKIPO are administrative, not judicial. They concern registration, i.e. whether a mark should be registered. In Special Effects Ltd v L&#8217;Or\u00e9al SA [2007] EWCA Civ 1, the Court of Appeal held that the doctrine of res judicata does not apply to pre-grant opposition proceedings. Therefore a failed pre-grant opposition does not create an absolute estoppel to seeking invalidity of a registered trade mark.<\/p>\n<p>By contrast, post-grant invalidity proceedings (including before the UKIPO) and trade mark infringement actions in the courts (e.g. IPEC or High Court) are separate judicial proceedings and treated as being before &#8216;a court of competent jurisdiction&#8217; for the purposes of res judicata. In Hormel Foods Corp v Antilles Landscape Investment Ltd [2005] EWHC 13 (Ch), Arnold QC (as he then was) confirmed that UKIPO invalidity proceedings can give rise to res judicata estoppel.<\/p>\n<p>However, even where res judicata estoppel may not apply (e.g. because the earlier proceedings concerned opposition rather than invalidity), re-litigation may be prevented due to abuse of process in narrow circumstances. For example:<\/p>\n<p>i. if the same facts and legal issues were already decided finally and fairly in the earlier proceedings before the UKIPO;<\/p>\n<p>ii. if the infringement claim is essentially trying to re-litigate the same core issue (e.g. likelihood of confusion, descriptiveness); and<\/p>\n<p>iii. the claimant is determined to be abusing the court&#8217;s process.<\/p>\n<p>The court will look at factors such as whether the UKIPO made findings that are directly relevant; whether there has been a material change in circumstances since the UKIPO decision; whether it is fair and just to let the new claim proceed; and whether the claimant could and should have raised the relevant grounds in the earlier proceedings.<\/p>\n<p>In summary, if a trade mark owner (A) has already opposed (pre-grant) the registration of a third party&#8217;s (B&#8217;s) mark in proceedings before the UKIPO and failed, A may be prevented from seeking the invalidity of B&#8217;s registered trade mark on the same grounds due to the abuse of process principle; and if A has already pursued post-grant invalidity proceedings before the UKIPO and failed, A may be estopped from seeking to invalidate B&#8217;s trade mark before the courts, depending on the specific circumstances of the prior opposition proceedings.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does the Court consider both liability and quantum within the same proceeding, or will any damages be assessed after the Court has reached a decision on liability? How are damages for trademark infringement proceedings typically assessed in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It is common for the court to separate the issues of liability and quantum in intellectual property cases, including those involving trade mark infringement. This approach is designed to ensure that the proceedings are conducted as efficiently as possible and to avoid unnecessary complexity. The trial on liability typically precedes the assessment of quantum and involves determining whether there has been an infringement of the intellectual property right in question. If liability is established, the court then assesses the damages or other remedies in a subsequent proceeding.<\/p>\n<p>Regarding the assessment of damages for trade mark infringement, the court considers several factors. Damages may be calculated based on the loss of business profits caused by the diversion of customers due to the infringement, reduction in prices due to competition, the loss of business reputation and goodwill, or on a royalty basis.<\/p>\n<p>Damages can also be assessed on the &#8220;user&#8221; principle, which calculates the loss based on the royalty that would have been paid for the use of the mark, even if the use did not lead to lost sales to the claimant.<\/p>\n<p>Under the laws of England and Wales, damages are compensatory. However, in cases where the infringement was particularly flagrant or where the defendant benefited significantly from the infringement, the court may award additional damages. This is to punish the infringer and deter future infringements and is in accordance with Regulation 3 of the Intellectual Property (Enforcement, etc.) Regulations 2006 (implementing the Intellectual Property Enforcement Directive (2004\/48\/EC)).<\/p>\n<p>A successful trade mark owner can also elect, as an alternative to claiming damages, for an account of profits made by the infringer as a result of the infringement. Before making an informed choice between seeking damages or an account of profits, the claimant is normally entitled to some disclosure from the defendant. This helps the claimant decide which remedy to pursue based on the available information.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In addition to an injunction and damages, what other remedies are available in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>1. Account of profits (Section 14, Trade Marks Act 1994): A claimant must choose between a remedy in damages or an account of profits. This equitable remedy allows the court to order the infringer to account for and disgorge the profits made from the infringement. The purpose of this remedy is to deprive the infringer of the profits gained through the infringing activities, treating them as if they conducted the business on behalf of the claimant. This remedy may be refused if the infringer was entirely innocent or if the trade mark owner delayed in bringing proceedings.<\/p>\n<p>2. Order for erasure (Section 15, Trade Marks Act 1994): The court may order the infringer to erase, remove or obliterate the offending sign from any infringing goods, materials or articles in their possession, custody or control, or where this is not reasonably practicable, to secure the destruction of the infringing goods, material or articles.<\/p>\n<p>3. Delivery up or disposal (destruction or forfeiture of infringing goods) (Sections 16 and 19, Trade Marks Act 1994): The court can order the delivery up or disposal (whether by destruction or forfeiture) of goods, materials or articles that infringe the trade mark. This remedy ensures that infringing goods are removed from circulation, preventing further damage to the trade mark owner&#8217;s rights.<\/p>\n<p>4. Publication of the judgment: Where a defendant is found to have infringed a trade mark, the court has discretion to order, at the request of the applicant, a defendant to take appropriate measures at their own expense to disseminate information concerning the judgment. Where a defendant is found to have not infringed a trade mark, the court also has the power to grant an order that requires the unsuccessful claimant to disseminate information concerning the judgment, but only where there is a real need to dispel commercial uncertainty such as when the claimant has publicised its infringement allegations.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a decision on the merits, is the winner entitled to recover all or a portion of its legal costs incurred in bringing or defending the proceedings. If legal costs are recoverable, what is the procedure involved and how does the Court assess the level of legal costs which should be reimbursed by the losing party.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The winner is generally entitled to recover a portion of its legal costs incurred in bringing or defending the proceedings. Costs are assessed either on the standard basis or on the indemnity basis, but the court will not allow costs which have been unreasonably incurred or are unreasonable in amount. On the standard basis, costs must be both proportionate and reasonably incurred in relation to the matters in issue, and any doubt about reasonableness or proportionality is resolved in favour of the paying party (i.e. the losing party). On the indemnity basis, any doubt about reasonableness of the costs incurred or amount will be resolved in favour of the receiving party (i.e. the winning party) \u2013 the proportionality test does not apply.<br \/>\nThe approach to deciding the allocation of costs in intellectual property cases involves considering three questions: (a) who won; (b) whether the winning party lost on an issue which was suitably circumscribed so as to deprive that party of the costs of that issue; and (c) whether the case was suitably exceptional to justify making a costs order on that issue against the party that had won overall. This approach aims to allocate costs fairly, reflecting the overall success and any specific issues where the winning party might have failed. In cases where both parties claim some measure of success, the court will allocate costs based on the extent of each party&#8217;s success.<\/p>\n<p>As mentioned in relation to questions 2 and 4 above, other factors may be taken into account such as the parties&#8217; conduct prior to, and in the course of, proceedings, and their efforts to resolve the dispute. Indemnity costs tend to be awarded where, for example, a party pursued a hopeless or dishonest claim, engaged in unreasonable conduct or failed to engage with settlement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Once the Court has issued a judgment, how long typically does the losing party have to comply with the Court\u2019s judgment including any final injunction issued? What are the consequences for failing to comply and how would the winning party seek enforcement of its judgement.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Generally, once an Order is made by the Court following judgment, it comes into effect immediately. However, the losing party is sometimes successful in arguing that a limited time period should be permitted within which to comply with the Court&#8217;s judgment. For costs and damages payments, the Court generally requires payment within 14 days.<\/p>\n<p>Where a losing party fails to comply, the successful party can make an application to hold them in contempt of court and seek to impose further injunctions and remedies. Such additional remedies might include additional damages, account of profits, fines, seizure and destruction of infringing goods, seizure of assets, increased costs (as the losing party would likely be ordered to pay the legal costs of the enforcement proceedings) and\/or even imprisonment.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\r\n<div class=\"word-count-hidden\" style=\"display:none;\">Estimated word count: <span class=\"word-count\">8545<\/span><\/div>\r\n\r\n\t\t\t<\/ol>\r\n\r\n<script type=\"text\/javascript\" src=\"\/wp-content\/themes\/twentyseventeen\/src\/jquery\/components\/filter-guides.js\" async><\/script><\/div>"}},"_links":{"self":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide\/138096","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide"}],"about":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/types\/comparative_guide"}],"wp:attachment":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/media?parent=138096"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}