The unauthorised use of a brand’s name, marks, imagery or reputation online is now a routine commercial risk. The first response for most brand owners is an informal report through the platform on which the infringement appears. Platform takedown routes resolve a proportion of matters, and quickly, but they are limited in scope: they depend on the platform accepting that its own policies have been breached, they provide no remedy where a takedown request is refused, and they do not address the loss suffered before removal or the risk of the same conduct resuming elsewhere.
Where the infringement is commercially significant, persistent or coordinated, the underlying legal rights offer a more reliable route. This piece sets out the principal causes of action available to brand owners in England and Wales, the remedies the courts can grant, and the practical steps that should be taken in preparation for enforcement.
Trade mark infringement
The Trade Marks Act 1994 confers on the proprietor of a registered mark the exclusive right to use that mark in the United Kingdom in relation to the goods or services for which it is registered. Section 10 sets out the acts which constitute infringement. Infringement occurs where a person uses in the course of trade a sign which is identical to the registered mark in relation to identical goods or services (section 10(1)), where a person uses a sign which is identical or similar to the mark in relation to identical or similar goods or services and there is a likelihood of confusion on the part of the public (section 10(2)), or where a person uses a sign in relation to any goods or services which is identical or similar to a mark with a reputation in the United Kingdom, and the use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark (section 10(3)).
Use “in the course of trade” captures a wide range of commercial online activity, including product listings, marketing content, sponsored search advertising and social media promotion. In Interflora Inc v Marks & Spencer plc [2014] EWCA Civ 1403, the Court of Appeal considered the use of a competitor’s registered mark as a keyword in paid search, and held that such use was capable of amounting to infringement where the average internet user would not readily be able to ascertain whether the goods or services advertised originated from the trade mark proprietor or a third party.
Passing off and unregistered brand rights
Where a brand does not benefit from a registered mark in the relevant class, or where the unauthorised use falls outside the scope of the registration, the common law action of passing off protects the goodwill generated through use of a distinctive brand identity. The classical formulation of the tort is set out in Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12, in which the House of Lords identified three elements: goodwill or reputation attached to the goods or services in the mind of the purchasing public; a misrepresentation by the defendant leading or likely to lead the public to believe that the goods or services offered are those of the claimant; and damage or the likelihood of damage flowing from the misrepresentation.
The application of passing off to the unauthorised commercial use of a person’s image or endorsement was established in Irvine v Talksport Ltd [2002] EWHC 367 (Ch), in which the High Court held that the false suggestion that the sportsperson had endorsed a commercial product amounted to a misrepresentation actionable in passing off. The principle was developed further in Fenty v Arcadia Group Brands Ltd [2015] EWCA Civ 3, in which the Court of Appeal upheld a passing off claim in respect of the use of a public figure’s image on merchandise where the public was likely to be misled about the commercial source of the product. These authorities are of particular relevance to counterfeit listings and impersonating accounts on online marketplaces and social media, where the presentation of the material is capable of creating a false commercial connection with the brand owner.
Copyright infringement
Where the material used without permission includes text, imagery, video, product design or other protected content, copyright subsists under the Copyright, Designs and Patents Act 1988. Infringement occurs where a person, without the licence of the copyright owner, does or authorises another to do any of the restricted acts in relation to the work, including copying, issuing copies to the public, communicating the work to the public, or making an adaptation. Copyright arises automatically on creation of a qualifying work and does not depend on registration. It is a common feature of online brand infringement, particularly where product photography, marketing content or design elements have been reproduced by an infringer.
Remedies
The remedies available to a successful claimant in trade mark, passing off or copyright proceedings include an injunction restraining further infringing conduct, damages assessed by reference to the loss caused by the infringement, or in the alternative, an account of the profits made by the infringer, delivery up or destruction of infringing goods and materials, and disclosure orders identifying suppliers, customers and the persons behind an infringing operation. Interim injunctive relief is available in cases of sufficient urgency where damages would not be an adequate remedy.
In cases involving anonymous online infringers, the Norwich Pharmacal jurisdiction, established in Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133, allows the court to order platform operators, hosting providers or payment processors to disclose information identifying the person responsible. This route is regularly used to obtain the details of operators of counterfeit websites and impersonating social media accounts prior to substantive proceedings.
Preparation and evidence
Effective enforcement depends on the preservation of evidence in its original form. The infringing material should be captured at the point of discovery, together with dates, URLs, contextual pages and, where available, the reach and engagement associated with the content. Records of the brand owner’s prior use and registration position should be assembled, and any correspondence with the platform or the infringer should be retained. Where the infringing conduct is continuing, further captures should be taken at regular intervals to establish the persistence of the conduct.
Key authorities
Legislation
Trade Marks Act 1994, s.10
Copyright, Designs and Patents Act 1988
Cases
Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12
Irvine v Talksport Ltd [2002] EWHC 367 (Ch)
Interflora Inc v Marks & Spencer plc [2014] EWCA Civ 1403
Fenty v Arcadia Group Brands Ltd [2015] EWCA Civ 3
Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133
Speak to Ai Law
Ai Law’s Brand Protection team advises companies, agents and individual brand owners on the enforcement of trade mark, passing off and copyright rights against infringing use online. Our approach is to seek the fastest practical resolution appropriate to the circumstances, and to escalate to formal proceedings where the position requires it.
To discuss the enforcement of a brand right or the response to an infringement, please contact a member of our team. You may be interested to read more of our articles on brand rights and protection, including How can a Business Protect its Intellectual Property Online.
This does not constitute legal advice and cannot be relied upon. If you need advice please contact us and we will be happy to help.