Trade Mark Litigation

Slaughter and May Susie Middlemiss

1. SOURCES OF LAW

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

The principal sources are:

• legislation; and
• decisions of the courts interpreting the legislation.

National legislation

• The Trade Marks Act 1994 (the ‘TMA’) which implements the Council Directive to approximate the laws of member states relating to trade marks (89/104/EEC) (the ‘Trade Mark Directive’) and sets out the law relating to registration, validity and infringement of national UK trade marks.
• The Trade Marks Rules 2000 provide more detail, in particular, procedures for filing and opposing trade mark applications in the UK Intellectual Property Office (‘UKIPO’).
• The Trade Marks Act (Proof of use, etc) Regulations 2004 amending the Trade Marks Act 1994.
• The Civil Procedure Rules (the ‘CPR’) which set out the detailed procedure for trade mark litigation in the courts of England and Wales.

The national legislation above (except the CPR) applies throughout the entire UK – ie England and Wales, Scotland and Northern Ireland. The TMA also applies to the Isle of Man, subject to exceptions and modifications.

European legislation and international treaties

• Regulation on the Community Trade Mark (the ‘CTM Regulation’) (40/94/EEC), as amended, which created a community trade mark (‘CTM’) and established the Office of Harmonization for the Internal Market (‘OHIM’) as the registry for the CTM.
• The Trade Mark Directive which sets out the law relating to registration, validity and infringement.
• The Enforcement Directive (2004/48/EC) which harmonises certain enforcement mechanisms.
• The Madrid Protocol (1989), which facilitates cross-border registration of trade marks from a single registration through the World Intellectual Property Organization.
• The European Convention on Human Rights (‘ECHR’). This has no direct impact but may be raised in litigation.
• The Paris Convention. Certain provisions of the Paris Convention are specifically implemented in the TMA.
• The Agreement on Trade-Related Aspects of Intellectual Property Rights. This established minimum standards for enforcement and court procedures within the EU.

Court decisions
England and Wales is a common law jurisdiction so non-statutory law and binding precedent judgments from prior cases form part of the law along with legislation.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

Tribunals broadly take precedence as follows:

• House of Lords (the highest domestic tribunal);
• Court of Appeal;
• Chancery Division of the High Court;
• Patents County Court (‘PCC’) or certain other County Courts;
• Comptroller-General of Patents, Designs and Trade Marks (the ‘Comptroller’) (an administrative official having regulatory functions in respect of certain types of intellectual property and a judicial role in connection with certain intellectual property disputes).

There is no appeal to the European Court of Justice (‘ECJ’), which is merely a referring court for deciding questions of interpretation of EC law but its decisions take priority on these issues. The TMA must be interpreted in accordance with the Trade Mark Directive.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

A UK trade mark may be opposed before grant in the UKIPO. After grant, a UK trade mark (or an international trade mark) may be declared invalid or revoked by the UKIPO or the Courts (as defined at 2.2 below). Where the application is before a Court, the procedure will be more akin to a trade mark infringement action.
A CTM may be opposed pre-grant before OHIM (opposition division) and may be declared invalid or revoked after grant by the OHIM cancellation division or the CTM Courts (see 2.2 below), typically the High Court.
The grounds are broadly the same for UK marks and CTMs.

Opposition
Third parties may oppose a UK, Community, or international trade mark application by filing a notice of opposition within three months from publication.
Oppositions are similar to court proceedings: they begin with written statements of argument, followed by the service of written evidence (there may be more than one round of evidence) to support the stated positions, and then a hearing.
The most frequently used grounds of opposition are the relative grounds (that is, where the opponent claims that the mark applied for is the same as or too close to his own mark), but oppositions may also be based on absolute grounds.
The absolute grounds for refusal of a trade mark are:

• the sign is incapable of graphic representation;
• the trade mark is devoid of distinctive character;
• the trade mark consists of signs or indications of trade to designate the characteristics of the goods or services;
• the trade mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
• a sign consists of the shape which results from the nature of the goods, or the shape which is necessary to obtain a technical result, or the shape which gives substantial value to the goods;
• it is contrary to public policy or principles of morality;
• it is deceptive;
• it is prohibited from use in the UK by any enactment, rule of law or by any provision of Community law;
• it is a specially protected emblem; or
• it has been applied for in bad faith.

The relative grounds for refusal of a trade mark (except where the mark is used with the consent of the proprietor of the earlier mark) are:

• the trade mark is identical to an earlier trade mark registered for identical goods or services;
• the trade mark is identical to an earlier trade mark registered for similar goods or services or the trade mark is similar to an earlier trade mark registered for identical or similar goods or services and there is a likelihood of confusion with the earlier mark;
• the trade mark is identical with or similar to an earlier trade mark and the earlier mark has a reputation in the UK or, in the case of a CTM in the EC, and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark; or
• its use in the UK is liable to be prevented by any rule of law (in particular, passing off) or by virtue of another earlier right (in particular, copyright, design right or registered designs).

Invalidation/Revocation
After grant a UK mark can be subject to an application for invalidation or revocation. Broadly speaking, it may be invalidated on grounds broadly equivalent to those available in an opposition. Alternatively, it may be revoked on the basis that: the mark has not been used over a period of five years calculated from the date of actual registration or any continuous five-year period thereafter; the trade mark was unlawfully registered or the application was filed in bad faith; or the mark has become generic or deceptive.

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Civil actions for registered trade mark infringement of UK marks or CTMs must be commenced in the Chancery Division of the High Court (the most common forum), the PCC or a County Court where there is also a Chancery District Registry (‘the Courts’). The UKIPO has no jurisdiction in relation to trade mark infringement claims. Actions for revocation and invalidity may be brought before the High Court/some County Courts or the UKIPO.
The Chancery Division of the High Court, PCC and certain other County Courts are the designated courts (‘CTM Courts’) for infringement actions concerning CTMs.
Criminal proceedings are available in a magistrates court or the crown court depending upon the seriousness of the offence.
The High Court includes specialist IP judges and most, but not all, trade mark cases are dealt with by them.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

English courts are bound by the decisions of higher English courts (as indicated by the order of priority given above) and by the ECJ on questions of interpretation of EU law. Scottish and Northern Irish courts are also bound by the decisions of higher courts in their own jurisdictions.
UK courts are not bound by the decisions of foreign courts, but do consider and may adopt the reasoning of foreign courts where they are considering similar concepts.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

The Courts deal with infringement and validity together when both issues are raised.
While invalidity proceedings can be brought in the UKIPO before the Comptroller, if infringement proceedings already exist in the courts, validity must also be dealt with there.
In cases in which claims are made for infringement of a CTM where validity is put in issue the national court will have exclusive jurisdiction. A court in another contracting state would then be bound to decline jurisdiction. However, if the issue of validity has already been raised before OHIM, it is likely that the UK proceedings will be stayed pending resolution by OHIM.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

In the High Court, parties must generally be represented by a barrister who presents the case in court.
A solicitor will be responsible for all other aspects of the case, in particular the conduct of the litigation and certain pre-trial hearings.
In the County Court, solicitors and trade mark agents can conduct litigation and appear as advocates though this is unusual. Before the UKIPO a party may appear personally or appoint anyone to represent them.

2.6 What is the language of the proceedings? Is there a choice of language?

The language of the proceedings is English. No other choice is available.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

Unregistered trade marks are protected under the common law action of passing off. Essentially, this entitles a trader who has established a reputation or goodwill in relation to a mark or ‘get-up’ to prevent use by others which amounts to a misrepresentation (typically to the effect that the goods are produced by or connected with the first trader) which causes (or is likely to cause) damage.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

The infringement provisions of the TMA are derived from the Trade Mark Directive, equivalent to those of the CTM Regulation and interpreted in accordance with rulings of the ECJ as well as the UK Courts and UKIPO.
A person infringes a registered trade mark if he uses in the course of trade a sign:

• which is identical with the trade mark in relation to the goods or services which are identical with those for which it is registered;
• where because the sign is identical with or similar to the trade mark and is used in relation to goods or services 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; or
• which is identical with or similar to the trade mark where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Sabel v Puma [1998] RPC 199). The overall impression created by the visual, aural and conceptual similarities and differences between the marks, and where appropriate the goods and services to which they relate, are assessed, from the perspective of the average consumer.
Whether protection extends to translations or conceptually identical but graphically different trade marks depends on the extent to which the words are distinctive or known to the English public.

3.3 Are there other causes of action for trade marks (eg dilution)?

English law has not recognised a general tort of unfair competition. However, a variety of actions convey similar protection.
A claim can be made under the tort of Injurious or Malicious Falsehood (also referred to as trade libel or slander of goods), where the defendant has maliciously published about the plaintiff (known in the UK as a ‘claimant’), words which are false and pecuniary damage has followed as a direct and natural result of the publication.
There is no separate action for ‘dilution’ though both trade mark infringement and passing off may protect a trade mark against use which is likely to result in dilution.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

Trade marks may be enforced against domain names, trade names, pseudonyms and other distinctive signs provided that in each case the elements described under section 3.2 are satisfied.

3.5 On what grounds can a trade mark be invalidated?

Grounds for invalidity include (i) the absolute grounds referred to above in question 2.1, however, a trade mark may not be invalidated if it has through use after registration acquired a distinctive character; and (ii) the relative grounds also referred to above in question 2.1.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

There are a number of use requirements:

• actual use or bona fide intention to use the trade mark for goods or services is a prerequisite for registration of a UK mark (in contrast with a CTM);
• the trade mark may be removed from the register if the holder fails to make genuine use of the trade mark for a period of five years either: a) within five years of the date when the mark was put on the register, and there are no proper reasons for such lack of use; or b) there has been an uninterrupted period of five years in which no genuine use of the mark has occurred, and there are no proper reasons for the lack of use; and
• misuse of the trade mark or failure to restrain others from misusing the trade mark may render the trade mark liable for revocation, either because it has become deceptive or has lost its distinctiveness.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

The main defences focus on:

• allegations of invalidity of the proprietor’s mark on the grounds listed above.
• the defendant’s activities (essentially where the sign is not used as a mark or the defendant has earlier rights).

The main defences relating to the defendant’s use are:

• overlapping trade marks, a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (this does not apply to CTMs);
• the use by a person of his own name or address;
• descriptive use indicating the characteristics of goods or services;
• where use is necessary to indicate the intended purpose of the goods or services (eg as accessories or spare parts); and
• various prior user rights.

Also see 3.8 and 3.11.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

While there are no specific antitrust related defences, a competition argument can be raised as a defence to a trade mark action or through a complaint to the EU Commission (or national competition authority).
Typically, an abuse of article 82 of the EC Treaty (abuse of a dominant position) is alleged, for example oppressive use of opposition procedure in BAT v Commission [1985] 2 CMLR 470.

3.9 Can a court only partially invalidate a trade mark?

A trade mark may be declared invalid in relation only to some goods and services for which it is registered.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

Amendment is allowed only when it does not substantially affect the trade mark’s identity, and then only in respect of corrections to name, address or obvious errors of wording or other obvious mistakes or restricting the goods or services covered by the application.
A new application would be required to widen the scope of the registration.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

A mark may be unenforceable where:

• the limitation period for bringing a claim of six years (five years in Scotland) has passed;
• the claim or issue has already been the subject of litigation between the parties and further litigation is prevented by the doctrine of estoppel; and
• the plaintiff is engaged in fraudulent conduct.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

While there is no specific action of unfair competition, trade mark infringement proceedings can be combined with a number of other claims providing similar protection, including, injurious falsehood, anti-competitive claims and breach of contract, provided they can be heard by the same forum. In the case of unregistered trade marks, an action for passing off would be brought instead of an action for infringement of the trade mark or in addition to protect unregistered ‘get up’.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

Once a mark is registered, proprietors, exclusive licensees and in some circumstances non-exclusive licensees may sue. That right may be removed by contract but may not be conferred on others, eg a distributor cannot be given a right to bring proceedings unless they have an exclusive licence.
Where there is more than one proprietor of a registered trade mark, each co-proprietor may sue in his own right but the co-proprietors will probably need to be joined as parties.
An exclusive licensee may have the right to bring infringement proceedings (to the extent provided for by the licence and provided it is registered).
A non-exclusive licensee (subject to the terms of the licence) is entitled to call on the proprietor to take infringement proceedings in respect of any matter which affects the licensee’s interests. If the proprietor refuses to do so or fails to do so within two months, the licensee may bring the proceedings.
For passing off, the owner(s) of the goodwill may bring proceedings.

Community Trade Marks
The proprietor of a CTM may sue for infringement after registration (damages can be claimed from the date of publication).
A licensee may bring CTM infringement proceedings only with the consent of the proprietor. An exclusive licensee may do so if the proprietor does not bring proceedings after a formal notice period.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment of non-infringement?

An action may be brought to restrain certain groundless threats of infringement proceedings (under s21 TMA) seeking a declaration that the threats are unjustifiable, an injunction and damages, though a wider declaration of non-infringement may not necessarily be granted. English courts also have a limited inherent jurisdiction to grant declarations. A declaration of non-infringement may be sought in relation to a CTM (to the extent available under national law).
The grant of a declaration by the court is discretionary.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

Any person who has committed an infringing act (whether himself or through an agent) can be sued for trade mark infringement.
Where the defendant is a one-person company it may be appropriate to join the sole director as co-defendant. A director of a limited company which infringes may be personally liable for infringing acts that they personally have committed (but is not liable merely because he is a director).
Alternatively, a director (or potentially a third party) may be liable as a joint tortfeasor where the director or third party has procured the company to infringe the registered trade mark or certain collaboration leading to infringement.

4.4 Is it possible to add or subtract parties during litigation?

Parties can be added or removed with the Court’s permission (and their consent if added as a plaintiff).

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

A trade mark owner can bring civil proceedings for infringement or passing off (or other actions – see above) of a UK mark (or CTM).

5.2 Are criminal proceedings available? If so, what are the sanctions?

Criminal sanctions are applied to certain forms of trade mark infringement (generally counterfeiting) in relation to goods but not services. Most criminal proceedings are brought by trading standards authorities (part of local government) but private prosecutions are possible. The defendant is liable for a fine or prison sentence.

5.3 Are border measures available?

A trade mark proprietor may give notice to HM Revenue & Customs of the impending arrival of infringing goods from outside the European Economic Area (‘EEA’) or from inside the EEA if the goods have not yet been entered for free circulation (under Regulation (EC) 1383/2003, given effect in the UK by the Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (SI 2004/1473)). The goods may then be intercepted, seized and treated as prohibited goods. Customs may also take such action on their own notion.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

National trade marks
The courts of the EU member states have adopted a cautious approach to the grant and enforcement of cross-border injunctions.
If a defendant is sued in the UK for infringement of various European national trade marks and the defendant calls into question the validity of those foreign registrations, the English court is likely to decline jurisdiction pursuant to articles 16(4) and/or article 19 (of the Brussels Regulation (Council Regulation 44/2001)). Further a pan-European injunction is only likely to be feasible against very particular defendants who are engaged in multinational infringements and sued in their ‘home’ state. The two recent ECJ decisions of Gesellschaft fur Antriebstechnik mbH & Co KG v Lamellen und Kupplungsbau Beteiligungs KG Case C-4/03 and Roche Nederland v Primus and Goldenburg Case C-539/03 (both relating to patent infringements) support this view (see Patent Litigation in Multiple Jurisdictions: An End to Cross-border Relief in Europe (Steven Warner and Susie Middlemiss) [2006] EIPR 580 (Vol. 328, Issue 11). Though they relate to patent cases, the same principles ought to apply to trade marks.

Community Trade Marks
Pan-European injunctions are available from CTM Courts in respect of infringement of CTMs and decisions on validity and infringement cover the whole EU (article 98(1) of the CTM Regulation) and Recital 15 (Preamble to the CTM Regulation).
In the case of Pfizer v Eurofood Link (UK) Ltd [1999] All ER (D) 1412, the High Court as the designated CTM Court granted a pan-European injunction against a UK defendant.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

The English courts have not specifically considered a ‘torpedo’ application – that is, an action where a defendant seeks to bring the matter first before the court of its choosing (by way of an application for a declaration of non-infringement in relation to foreign trade marks) in a forum where proceedings are likely to be slow, in order to stop the plaintiff from bringing infringement proceedings in another faster forum.
There is little scope for such tactics in relation to trade marks since UK trade marks only have national effect and the CTM regime provides for the granting of pan-European relief in infringement actions.
CTM Courts have exclusive jurisdiction for such actions (if permitted under national law) and a declaration of non-infringement must be sought before the CTM Courts of the member state that has personal jurisdiction over the defendant based on the application of the domicile rules rather than the location of the infringing act. Invalidity cannot be raised by way of a counterclaim or defence.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

The courts do not have the power to force the parties to use ADR. ADR however must be considered at certain stages of litigation. Failure to do so may have an adverse impact on costs recovery (Dunnett v Railtrack [2002] 2 All ER 850).
The UKIPO opposition procedure includes a ‘cooling off period’ of up to 12 months to allow parties to negotiate before the adversarial stage of proceedings.
ADR is common in trade mark disputes, focusing on resolution by way of licensing or co-existence arrangements and contractual settlements can be enforced through the courts.
It is extremely unlikely that the UKIPO would recognise and execute an arbitral award declaring a trade mark invalid since validity of a UK trade mark may only be challenged in proceedings before the High Court or UKIPO. If the issue were dealt with in arbitration or other ADR, the result could only be effective if the proprietor agreed to surrender rights and/or the parties agreed terms affecting only enforcement between them or making information available to the courts of UKIPO, resulting in the UKIPO itself altering the register.

6. Procedure in Civil Courts

6.1 What is the format of trade mark infringement proceedings?

In contrast with other European jurisdictions, the civil court process in England is adversarial rather than inquisitorial and is governed by rules designed to avoid the possibility of either side surprising the other with an ambush at trial.
Two key aspects of the English court approach are (1) the use of oral evidence and cross-examination of witnesses and (2) documentary disclosure by each party of material that both helps and hinders their case.
Trade mark infringement proceedings typically comprises:

• Pleadings
  High-level formal statements of each side’s case.

• Case management conference
  This sets the timetable for the case, and addresses issues such as the scope of disclosure, and number of witnesses.

• Disclosure
  See 6.6 below.

• Evidence gathering, preparation and exchange of witness statements
  Witness statements set out the ‘evidence in chief’ intended to be given by each witness (ie the party’s ‘positive’ case).

• Trial and judgment
  The trial is an oral hearing typically lasting a few days. Shortly before the trial, the parties file detailed written arguments.

6.2 Are disputed issues decided by a judge or a jury?

Disputed issues are decided by a judge (or in some cases a master). Juries are not used.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?

The oral testimony essentially begins with cross-examination by the opposing party. The party who called the witness may then ‘re-examine’ to assist the witness in answering any points raised in cross-examination.
The parties may, with the permission of the court, use expert witnesses. A joint court-appointed expert is feasible as an adviser but in practice not used. All experts (despite being paid by one party) have a special duty to the court to be independent.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

Survey evidence is sometimes used to prove distinctiveness, likelihood of confusion or reputation and is more likely to be used in the Registry than in the courts. The courts in particular are cautious about the value of surveys, the results being highly dependent on the manner in which the survey is conducted. Details of all surveys must be disclosed and an expert available for cross-examination on the results and methodology used. Surveys not conducted in accordance with the strict guidelines outlined by the courts may be given little weight by the court or excluded from the evidence.
The cost of a survey depends on the nature of the product/service in question, the way in which the survey is to be conducted and the number of people questioned. It will usually require the involvement of specialists in market research and legal advice to ensure it meets the court’s guidelines. A survey is likely to cost several thousands of pounds and a sizeable one could cost significantly more. A successful party in litigation might recover a proportion of its costs of conducting a survey, provided it has been properly conducted.

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?

Is evidence obtained for criminal proceedings admissible in civil proceedings?
In civil cases, it is for the judge to rule upon the admissibility of evidence applying the general rules of evidence; namely the principles of admissibility, relevance and the rules on hearsay.
The fact that a person has been criminally convicted by a UK court is admissible evidence in subsequent civil proceedings for the purpose of proving that he committed the offence in question. Documents, information, complaints or indictments used in the criminal case will also be admissible evidence in a subsequent civil case.

Is evidence obtained for civil proceedings admissible in criminal proceedings?
In criminal cases, all decisions relating to the admissibility of evidence are made by the judge. The court may refuse to allow evidence on which the prosecution proposes to rely, if the admission of the evidence would have an adverse effect on the fairness of proceedings.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

‘Discovery’ is termed ‘disclosure’ in English courts, and typically takes place once all parties have filed their pleadings (CPR 31.11). It is generally mandatory though the courts may reduce the scope of disclosure or dispense with it.
The parties are required to make a reasonable search for all relevant documents (which are broadly defined) in their possession or control (CPR 31.7). Standard disclosure (under CPR 31.6) requires a party to disclose all the documents on which it relies, which adversely affect its own case and which adversely affect or support another party’s case other than those protected by legal privilege.
The court may also order broader disclosure to deal with specific issues and/or documents. Disclosed documents may only be used for the purposes of the case.
Pre-action disclosure and disclosure against certain third parties is also available in trade mark disputes (eg to assist in an early resolution or reduce costs), though unusual.

6.7 What level of proof is required for establishing infringement or invalidity?

Burden of proof of infringement in civil proceedings
The plaintiff must show that there has been an infringement of his trade mark on the balance of probabilities, ie that an allegation is more likely to be true than not.
Once a prima facie case for infringement has been established, the onus of proof shifts to the defendant to show that he has a defence.
The burden of proof for invalidity is on the balance of probabilities and rests with the party challenging the mark. Where the use of a registered trade mark is in issue, the proprietor must establish use (section 100 of the TMA) or proper reasons for non-use (Philosophy Inc v Ferretti Studio Srl [2003] ETMR 97 (CA)) .

Burden of proof in criminal proceedings
It is probably necessary to establish that the Defendant’s activities amounted to civil trade mark infringement. The prosecution must prove its case beyond all reasonable doubt but the accused need only establish a defence (eg that he believed on reasonable grounds that the use of the mark did not infringe) on the balance of probabilities.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

A trade mark action will typically come to trial within 10-12 months of commencement, depending upon the length and complexity of the case, the attitude of the parties and the availability of court time and the court and urgency. A speedy trial can be ordered in urgent cases and may be heard within three to six months.
A private criminal prosecution may take six to12 months or longer if the public prosecutor takes over the prosecution.

• Use of case management powers to speed up proceedings
  The court has general powers to extend or shorten time for compliance with any rule.

• Speedy Trial
  A speedy trial may be an appropriate alternative where an interim injunction is not appropriate (Play It Ltd and another v Digital Bridges Ltd [2005] All ER (D) 18). Some aspects (in particular disclosure) may be more limited but, in general terms the procedure is as usual, but intensive.

• Streamlined procedure
  A simplified and potentially faster and cheaper route is available for cases in the PCC.
  The streamlined procedure provides for:
  – evidence (both factual and expert) only in written form;
  – cross-examination of witnesses limited – or absent; and
  – no (or severely limited) disclosure.

• Interim Injunctions
  The plaintiff in an infringement or passing off action may apply for an interim injunction to halt alleged infringement to restrain the defendant, until the hearing of the action or further order.
  Interim injunctions relating to trade mark disputes are often to be refused or adjourned to trial (with an order for a speedy trial instead). It is sometimes possible to have a speedy trial in almost the same time as the hearing of a substantial interim application (though in really urgent cases, an interim injunction may be granted in days or hours).

• The hearing of a preliminary issue
  The court may hear an issue before the rest of the case to save time and costs if it may dispose of an action altogether.

• Summary judgment
  Summary judgment (or the striking out of part of the case) may be given in very clear cases at an early stage provided the claim or defence does not turn on a factual matter.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?

The defendant can generally introduce delay (particularly in the early stages before the court has set a timetable) by applying for extensions of time allowed for different steps in the action.
A plaintiff can press forward with the pleadings and make applications to court to keep extensions short and set the timetable and particularly trial date as early as possible. If there is real urgency, a shortened timetable may be obtained. Where appropriate, an interim hearing may force the defendant to press ahead.

7. Final Remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

The remedies available are generally similar for infringement and for passing off. These are:

• A permanent injunction against further infringement, though generally granted, is a discretionary remedy.
• A declaration that a particular activity, generally past activities, amounts to infringement.
• Delivery-up or destruction of the products bearing the infringing mark (though erasure of the mark and delivery up are not available for passing off).
• A monetary award (discussed further below).
• A declaration that the trade mark is valid. If validity is contested in subsequent proceedings, the second challenger will face substantial costs penalties if the trade mark is again upheld as valid.

Virtually all decisions are published. Though this is not specifically regarded as a ‘remedy’. This can have a significant commercial impact.
The penalty for committing the criminal offence of unauthorised use of a trade mark or falsification of the register is a fine (in some cases limited to £5,000) or imprisonment for a term not exceeding ten years (or in some cases six months), or both.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

An injunction will generally restrict the defendant, its agents and servants including forwarding carriers but will not be directly effective against the infringer’s suppliers or customers unless they are specifically joined as parties (on the basis of their own infringing acts).
However, aiding or abetting breach of an injunction, with knowledge of the injunction is (like the breach itself) a contempt of court, punishable by fines and/or imprisonment.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

A plaintiff is entitled to a monetary remedy in respect of infringement and must choose between:

• account of profits, and
• damages (applicable from the date of filing of the application).

There is no punitive element. In most cases, the parties will either agree a sum to be paid by way of damages or damages will be assessed in a separate set of proceedings.
The defendant may have to disclose sufficient information to enable the plaintiff/trade mark owner to make a reasoned choice between the two (Island Records Limited v Tring International plc [1995] FSR 560).
The general principle is that the trade mark owner should be put in the same position as if the infringement had not happened, ie compensated for all reasonably foreseeable losses suffered as a result of the infringement. This may be assessed as lost royalty or licence fee and/or lost profits on the sales made by the defendant or lost profits from an enforced price reduction or recover damages for injury to reputation.
Alternatively, damages may be based on a notional licence fee or reasonable royalty assumed to be agreed between a willing licensor and licensee (Irvine v Talksport Ltd [2003] EWCA Civ 423; [2003] F.S.R. 35; Reed Executive Plc v Reed Business Information Ltd (Damages) [2002] EWHC 2772).
In an account of profits, the profits attributable to the unauthorised use of the trade mark are paid over.

8. Preliminary Relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

Preliminary relief is available where urgency is shown or that the relief is otherwise necessary in the interests of justice. A variety of preliminary relief is available pending trial:

• An order for early disclosure or inspection which may even be made before commencement of proceedings.
• A search and seizure order. This requires the defendant in clear and serious cases to admit the plaintiff’s solicitor, together with an independent supervising solicitor, to its premises and allow a search to be made for infringing items and relevant material (eg sales records, infringing products and equipment used to make infringing products) and to seize, copy or photograph such material.
• A freezing order (or ‘Mareva’ injunction), by which assets of the defendant which may be needed to satisfy judgment will be retained.
• A preliminary or interim injunction pending trial. To determine whether an interim injunction should be granted, the court looks at the following factors (American Cyanamid Co. v Ethicon Ltd [1975] A.C. 396):
  – whether there is a serious question to be tried and, increasingly, the relative strength of the parties’ cases;
  – whether damages will be an adequate remedy (because of the nature of the infringement or the defendant’s financial position);
  – where the balance of convenience lies, ie what is just and convenient given the position of both parties;
  – where other factors are evenly balanced, the court will tend to maintain the status quo.

The plaintiff will generally be required to give an undertaking to pay damages to the defendant for loss resulting from the injunction if it transpires it ought not to have been granted.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

Ex parte relief (eg an injunction or search and seizure order) is available in exceptional cases, where the matter is so urgent that the defendant may not be notified or where there is real concern that the defendant may dispose of evidence. However, the order will be granted for a short time, until the matter can come back before the court on an inter partes basis. The applicant has special duties to investigate the facts and fully and fairly to present the evidence of the case (and include the arguments both for and against the application).

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

See answers to 8.1 above. The parties are subject to strict duties to preserve all relevant documents and may be required to produce them on disclosure.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

A defendant can raise the issue of validity but it will not be determined at that stage.

8.5 What is the format of preliminary injunction proceedings?

Proceedings for an interim injunction typically comprise:

• service of an application notice with details of the order sought and evidence in the form of a witness statement(s);
• a preliminary timetable hearing;
• service of evidence in reply by the defendant and plaintiff;
• exchange of written arguments; and
• an oral hearing at which each party’s counsel makes submissions.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

Generally evidence is given in written witness statements. In some cases (ie in respect of search and seizure orders and freezing orders), formally sworn affidavits are required. There is no oral evidence or cross-examination. The parties are entitled to provide documents along with their evidence but there is no provision for disclosure at this stage (except under question 8.1(1) and (2)).

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

The plaintiff must establish that there is a serious question to be tried but practice is changing and, where the merits of the case are demonstrably strong, an injunction is probably more likely.

8.8 How long do preliminary injunction proceedings typically last?

Generally speaking, an interim application could expect to be heard within about two months but an injunction may be granted within weeks (or even days or hours), depending on the circumstances.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

Main proceedings must be commenced when any interim relief is sought (generally before or simultaneously with seeking such relief).

9. Appeal Procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

A decision of the Registrar may be appealed to the Chancery Division of the High Court, or to a person appointed by the Lord Chancellor to hear and decide appeals under the TMA.
Decisions of the High Court and the PCC may be appealed to the Court of Appeal with permission and there may be a further appeal to the House of Lords on points of law (with permission and generally where the issue is one of general public importance).
An appeal takes the form of a review rather than a rehearing so it is rare that new evidence is considered on appeal. The appeal proceeds on the written evidence only, transcripts of the first instance proceedings and written and oral arguments.

9.2 How long do appeal proceedings typically last?

Appeal proceedings in England from the High Court to the Court of Appeal will typically take about a year (and to the House of Lords one to two years).

10. Litigation Costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

Costs depend upon the nature of the type of action sought. If the matter is dealt with at an interim hearing or a summary judgment with no further action necessary, then costs are likely to be in the region of tens of thousands of pounds, depending on the amount of evidence used and its nature. If the matter is to be argued fully at trial with survey evidence, experts and a considerable number of witnesses, then the likely costs will be between £100,000 to £500,000, or more in complex lengthy cases. Appeal costs are typically around one-third to half of the size of first instance costs.

10.2 Are costs recoverable from the losing party?

Costs are awarded in the court’s discretion but the general principle is that the loser pays the winner’s costs (in practice a proportion of them) in relation to the individual issues on which the paying party lost. The court will look at all the circumstances (including the conduct of the parties and offers to settle). The precise level of costs will be determined by a detailed assessment procedure.

11. Forthcoming legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law?

The development of trade mark law is heavily influenced by ECJ decisions. The broader protection available to marks with a reputation is a developing area.
The laws relating to the criminal infringement of copyright and trade marks have both been tightened over recent years.

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

In December 2006, an independent review into the UK Intellectual Property Framework was published (the Gowers Review). Among a number of areas which are the subject of further consideration is the area of damages for trade mark infringement, where further legislation is likely.

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

Civil Procedure Rules
Patent Office website: www.patent.gov.uk
Morcom, Roughton, Graham and Malynicz. The Modern Law of Trade Marks. (2005)
Kitchin, Llewelyn, Mellor, Moody-Stuart, Keeling. Kerly’s Law of Trade Marks and Trade Names. (2005)
Gowers Review of Intellectual Property: www.hm-treasury.gov.uk/