Trademark infringement is defined as the unauthorized use of a trademark or service mark on or in connection with goods and services in a manner that is likely to cause confusion, deception, or mistake about the source of products. Infringement may be constituted as a result of a deliberate attempt by an individual or a company to benefit unfairly from the name of a strong brand by assuming a trademark that is similar to that of the competitor. In other cases, it may be a mistake caused by the inferiority and inconspicuous nature of the already existing trademark that leads to the confusion. Whether the action was deliberate or not, the affected party can seek legal redress whenever it feels that its brand name, logo, or other brand attributes have been infringed upon. It is expected of the owner of the trademark affected by the infringement to go to court and report the matter. It means that as long as the case is not presented to the courts for redress, little can be done even if customers are affected by the problem. The only legal option that customers or their legal representatives can take is to complain about the quality or any other issue that can be proven to affect them because of the confusion. When such a case is presented in court, the measurement of the infringement is often conducted using the likelihood of confusion test.
The following are the critical factors that define trademark infringement.
1. The Degree of Similarity of Trademarks
One of the principal factors that often define the infringement of a trademark is the level of similarity of the marks. The Coca-Cola Company has a unique trademark defined by specific colors, images, and letters. In Qualitex Co. v. Jacobson Products Co., Inc., the United States Supreme Court held that color is a legal requirement for trademark registration and deserves protection under the Lehman Act. When a company, irrespective of the industry in which it operates, uses the same trademark or that which is almost the same, it would be considered a copyright infringement. Customers can easily be confused that the Coca-Cola Company has diversified its product portfolio. When fighting such a case of infringement, the Coca-Cola Company would argue that the infringing company’s mistakes and scandals may hurt its image (the Coca-Cola Company’s) in the market even if they are not operating in the same company. Customers may want to dissociate from the brand and its products because of such scandals. It will be a sufficient ground for a presiding judge to rule that there was a trademark infringement.
2. The Plaintiff’s Trademark Strength
Sometimes it may be necessary to determine the plaintiff’s trademark strength before concluding that there was infringement. Registration of trademarks is a continuous process. Most of the registered trademarks in the country are not in active use. Some were for companies that started but failed along the way in their initial years of operation. Others were registered by individuals who wanted to start their companies, but circumstances made it impossible to happen. There is also a category of individuals who intentionally register numerous trademarks with the primary goal of extorting money from companies who may be interested in using the same in future. When a case is presented before the court, one of the issues that will be investigated is the usability of the first trademark. As the name suggests, a trademark should be a mark that identifies a given company in the market. Its relevance is lost if the company for which it was registered is no longer operational. The new company will not be infringing on anyone’s right. As stated above, trademark infringement test looks at the possible confusion that is caused by the existence of marks which are similar. In case the original company is no longer in operation, the concept of confusion will no longer hold. The new company that is in active operation in the market may be granted opportunity to continue using the trademark.
3. The Degree of Products’ Similarity
It is common to find a case where two different companies use a similar image to identify their brands. Apple Inc. is one of the leading electronic companies in the global market. It uses the image of apple fruit to help identify and distinguish its products from that of its market rivals. Stribling Orchard is a firm that specializes in the production and distribution of different kinds of fruits, especially apples. They both use the apple fruit in their trademark to help promote their brand and to distinguish their products in the market. Apple Inc. registered its trademark ahead of Stribling Orchard. It is not possible for Apple Inc. to claim that there is a copyright infringement because this fruits company is using a logo that is almost similar to its own. Industries within which these companies operate are so distinct and can never be confused. Products that companies offer are also different. It is not possible for a customer who intended to purchase an iPhone, iPad, or Macintosh to end up with an apple fruit from Stribling Orchard because he got confused due to the similarity of the logo. There is no legal basis for Apple Inc. to sue this fruits company for trademark infringement. However, the situation may change in case the fruits company decides to diversify its products to include those that are offered by Apple Inc. The infringement will be proven if it is established that customers are likely to end up with a product they never intended to purchase because of the similarity.
4. Evidence of Confusion in the Market
In some cases, it may be necessary for the plaintiff to provide evidence of confusion in the market. It may be a case where trademarks are not the same, but the plaintiff feels that the use of colors, images, or the naming pattern of the new trademark may be an infringement. It is a common problem if the two companies are operating in the same industry hence is a direct competitor. Such issues arise when it is not easy for customers to distinguish products of companies in that industry other than by their brand name, logo, and other brand attributes. Bottled water companies may be a perfect example of such a case. The court will need a proof that customers are likely to confuse products in the market if the new trademark is allowed to operate without major changes. The new trademark owner may be directed to make significant changes on the product to ensure that customers do not get confused when planning to purchase products of a given brand.
5. The Sophistication of Purchasers
The level of sophistication of customers is another factor that may be looked at when investigating a possible trademark infringement. Some products only attract a specific segment of customers. The court may be convinced that customers are highly sophisticated to the extent that they cannot easily be confused by a possible attempt of a different company to use a name similar to their preferred brand. This applies to products that target highly trained professionals such as doctors, engineers, and other scientists. They may have the capacity to test and determine the genuineness of a product before making the purchase. Such extreme requirements are often rare and it must be established that all customers will make the test before purchasing a product. For instance, it is easy for a customer to determine whether they are purchasing a genuine iPhone by simply logging into the iTunes and getting the specifications of the phone. However, not all customers have that level of sophistication. Most of them will look at the brand logo and the shape of the phone as the only primary factors before making their purchase. By the time they realize that they have been cheated, it may be too late to take an appropriate corrective measure.
6. Determining if Trademark Registration was Bona Fide
The primary assumption that is always made when one registers a trademark is that there is a legitimate business-driven desire to have a mark that will distinguish the owner’s products from that of the market rivals. However, some individuals have ulterior motives when they register their trademarks. Some do it with the intention of making quick money by possibly selling it to a company that may find it relevant. Others do it deliberately to hurt an already existing firm. It is possible that the court may find the level of confusion between the two brands to be reasonably low. One final factor that the court may look at is whether or not the trademark was registered in good faith. When the focus is on the reason behind the registration, the court’s decision will not give preference to the trademark that was registered ahead of the other. The ruling will be made against a trademark that was registered with ill intentions. For instance, if it is established that the trademark owner has ten or twenty other registered trademarks, none of which is in active use, it may be an indication that the owner is interested in extortion other than engaging in genuine business activities. A perfect case example is Zazu Designs v. L’Oreal, S.A. of 1992. It involved a deliberate move by L’Oreal to distribute its product under a new brand name, Zazu, with a full knowledge that Zazu Designs intended to use the same brand name to sell its products in the market. The court determined that L’Oreal acted in bad faith by using a name that a rival company intended to use. It was denied the ownership of the name because it lacked a valid reason why it was necessary to introduce a new brand name at a time when a rival firm that had been using the same trademark was planning an expansion and a possible registration of the brand.