Starting a business? Whether you are in Europe, the UK, Asia, or anywhere else, understanding trademarks is essential. They protect your brand, help prevent copycats, and are crucial for international expansion. Here’s a practical guide.
What Is Trademark Infringement?
Trademark infringement happens when someone uses a trademark without permission in a way that confuses customers or damages the original brand.
Think of it like a shortcut to explain your brand: if someone else uses your brand’s name, logo, or slogan without consent, they are essentially riding on your reputation.
Key Points Every Business Owner Must Know:
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Proof of infringement – The claimant (the original trademark owner) must show:
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Defendant’s defenses – The accused party may respond by showing:
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No infringement actually happened.
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One of the legal defenses applies (e.g., using their own name, descriptive use, prior use, comparative advertising).
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The trademark should be invalidated or removed from the register.
Common Examples of Trademark Infringement
A business can be accused of infringement in several ways, including:
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Putting a competitor’s logo on products or packaging.
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Selling goods or services using a similar brand name.
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Importing or exporting products under a registered trademark without authorization.
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Using the trademark in advertising or online campaigns in a way that misleads consumers.
Example:
Imagine a startup in Singapore selling headphones with a logo almost identical to "Bose." Even if they design different products, using a confusingly similar logo can lead to trademark infringement claims in multiple countries.
Primary vs. Secondary Infringement
Primary Infringement:
Occurs when someone directly uses a trademark on goods or services.
Secondary (Contributory) Infringement:
Occurs when someone helps or enables another party to infringe, such as providing packaging, labels, or marketing materials.
Non-physical or Digital Infringement
Infringement doesn’t have to involve physical products. It can include:
Example:
A Hong Kong-based website selling toy cars using the "Lego" trademark is infringing even if the toys are not LEGO-made, because customers could believe they are genuine.
Where Infringement Counts: Territory Matters
A trademark owner can only claim infringement in territories where the law applies.
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For online ads, courts consider whether the ad targets consumers in that country.
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Example: A French company running a website in Japanese may still be liable if the site targets UK consumers.
Key takeaway: If you’re selling globally, think about where your brand is protected and where infringement could happen.
💡 Tip for International Business:
Always register your trademark in the countries where you plan to sell. Online visibility can create cross-border infringement issues quickly.
Now we’ll dive deeper into how the law interprets “use” of a trademark, why consumer perception matters, and the full scope of protection.
What Counts as “Use” of a Trademark?
Not every mention of a brand is infringement. For a trademark to be “used” legally:
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It must be in the course of trade – that means a commercial activity aimed at selling goods or services, not personal use.
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It must relate to goods or services – the trademark must be used in connection with actual products or services, not incidentally.
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It must affect the trademark’s functions – the use must impact the brand’s ability to guarantee origin or reputation.
Consumer Perception Is Key
Courts look at the average consumer’s perspective to determine if a trademark has been infringed.
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If consumers believe the product comes from the original brand, the trademark’s function is affected.
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If consumers recognize it as a separate or collectible item, there may be no infringement.
Example:
A model car company uses a car manufacturer’s logo on a toy. If customers see it as a toy replica and not as a product from the manufacturer, it may not be infringement.
Online and Digital Considerations
Digital marketing introduces new challenges:
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Adwords and keyword advertising – Buying a competitor’s brand name to trigger your ads can create confusion.
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Courts consider whether the average online user could mistakenly believe there is a link between your business and the trademark owner.
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Example: A company bids on “Nike” in Google Ads to show its own shoes. This could infringe Nike’s trademark, depending on consumer perception and ad placement.
Scope of Trademark Protection: The “Triad”
Trademark law protects brands in three main ways, sometimes called the triad of protection:
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Identical marks on identical goods/services – Complete protection against direct copying.
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Similar marks on similar goods/services – Protection against confusingly similar branding.
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Dilution or unfair advantage – Even if goods are unrelated, using a well-known mark can harm its reputation or take advantage of its fame.
Practical Takeaways for International Business
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Always ask: Is my use commercial? Does it relate to goods/services? Could consumers be confused?
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Protect your brand in all countries where you plan to sell.
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Monitor online advertising and marketplaces for unauthorized use of your trademark.
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When buying domain names, keywords, or running online ads, consider how consumers perceive your brand and competitors.
💡 Tip:
Even if your product or service is in a completely different category, a well-known trademark can still be protected under the dilution principle. Be cautious when using names, slogans, or logos that are even remotely similar to famous brands.
now we focus on defenses against infringement and how to safely operate in a competitive market.
General Defenses Against Trademark Infringement
Even if you are accused of infringement, the law recognizes legitimate defenses:
a) Consent or License
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If the trademark owner gave permission, you are not infringing.
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Example: A licensed manufacturer produces merchandise under an official brand contract.
b) Non-Trademark Use
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If your use of the brand does not affect the trademark’s function, you may not infringe.
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Example: Using a competitor’s logo for academic comparison, commentary, or review.
c) Using Another Registered Trademark
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If you use a different registered trademark, even if similar, it may be lawful under certain conditions.
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Key Point: The use must match the registration exactly. Minor changes may invalidate this defense.
Protection for Other Traders
Article 6 of the EU Trade Mark Directive provides defenses designed to protect honest business practices:
a) Using Your Own Name or Address
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Individuals can use their personal name or business address without infringing.
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Example: John Smith can sell “Smith Electronics” even if “Smith” is a registered trademark elsewhere.
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Caution: This does not apply to corporations under current EU rules.
b) Describing a Product’s Characteristics
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You can use terms that describe quality, quantity, purpose, origin, or other characteristics.
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Example: If “Baby Dry” is registered for diapers, a competitor can advertise “keeps your baby dry” as a product description.
c) Indicating Intended Purpose or Compatibility
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You may reference a trademark to describe compatibility of your product.
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Example: “Brake pads compatible with FORD models” is allowed.
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Key: There must be no alternative way to convey this information to consumers.
Honest Practices Requirement
All the above defenses must meet the honest practices standard:
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Do not mislead consumers into thinking there is a connection with the trademark owner.
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Do not damage the reputation of the trademark.
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Do not present your product as an imitation.
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Courts will assess your intentions and surrounding circumstances objectively.
Local Rights and Acquiescence
a) Prior Local Rights
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If your trademark has been used first in a specific region, you may defend your use.
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Example: A small local brand that existed before a national registration may have limited protection in its area.
b) Acquiescence
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If the trademark owner allowed use for 5 years without objection, you may claim “statutory acquiescence”.
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Limitation: Only applies to registered trademarks, and the result is often coexistence rather than full protection.
Honest Concurrent Use
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In long-term situations where two businesses have used similar marks honestly, courts may tolerate some confusion.
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Rules:
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The coexistence must be long-term and honest.
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The mark must indicate goods or services of both entities, not just the claimant.
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The defendant must not increase confusion or damage goodwill.
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Example: Two local plumbing companies using similar names for decades may continue, but cannot mislead customers beyond natural confusion.
Practical Tips for International Business
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Check trademark databases in all markets before launching a brand.
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Document your use of your brand from day one to establish prior rights.
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Use descriptive terms honestly and clearly separate your product from competitors.
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Monitor online ads and marketplaces to avoid infringement by partners or resellers.
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Consult IP experts before bidding on competitors’ keywords or using well-known brand names in promotions.
💡 Key Takeaway:
Trademark law is not just about preventing copying—it’s about protecting consumers and ensuring fair competition. If you respect the functions of trademarks and use honest business practices, you can operate safely even in highly competitive markets worldwide.
Q1: Which scenario would likely be considered primary trademark infringement?
Selling T-shirts with a registered sports team logo without permission Writing a blog post about a brand logo for personal review Describing a competitor’s product in academic research
Q2: Which of the following is a recognized defense against trademark infringement?
Using a competitor’s trademark to describe compatibility of your own product honestly Copying a competitor’s logo to increase your sales intentionally Using a trademark without permission for commercial gain
Q3: Which situation illustrates secondary (contributory) infringement?
A printing company knowingly produces stickers for a counterfeit brand Selling products under your own registered trademark legally Using your own logo on your products
