Key Elements Used to Determine the Infringement of a Trademark
Your brand is not free from infringement even if you have conducted trademark registration in the UAE or any other jurisdiction where you have a business presence. The more well-known your brand the more chances of being infringed by competitors. Trademark agents in the UAE can help you identify your infringers by providing you with trademark watch services.
However, it will be useful for you to have the necessary knowledge to determine what constitutes a trademark infringement. You need to determine whether your competitor’s mark is conflicting with your registered trademark. Most examiners and courts across the world use certain common elements that help them to determine whether or not the infringement happened. Read ahead to know some of the commonly used elements to determine the infringement of a trademark:
Strength of a Trademark
Assessing the strength of a trademark is the first step in determining trademark infringement. The courts will assess the strength of the trademark that was registered first. The more strong or more distinctive the original mark, the more protected it is. The original trademark will be assessed on whether the trademark is generic, descriptive, suggestive, arbitrary or fanciful. Trademark agents in the UAE can help brand owners to assess the strength of their trademark.
Similarity of Trademarks
In the next step, the two trademarks will be assessed for their similarities. The elements used to determine trademark similarity include appearance, pronunciation, and verbal translation. The court will check if the mark in question would create confusion among the public if viewed in isolation. The trademark will also be assessed in its entirety as opposed to its individual features.
Product relation is not strictly restricted to the industry of the products represented by the conflicting trademarks. The court mainly checks if the two products have the potential to be related in the mind of the consumer. For example, a ketchup brand and a business consultancy firm with similar logos may not confuse consumers as they are rarely used in the same context.
However, a ketchup brand and a paper plate brand with similar logos may be related in the minds of the consumer when it comes to picnics and barbecues. Furthermore, ketchup brands with similar logos or brand names have a strong potential to confuse consumers.
Evidence of Actual Confusion
This element will become relevant when the court assesses situations where confusion has occurred on account of the trademarks of the two products. Here the actual confusion is direct evidence that the products in their actual market context have similarities adequate enough to create confusion. The trademarks will be deemed too similar if there has been confusion in the past about the two products, or if a consumer has had an issue as a direct result of the similarities.
Likely Degree of Purchaser Care
This factor is used by courts to assess whether consumers are likely to apply a significant amount of care while purchasing a product. If two similar products are of considerably less price range, the consumer may not pay close attention while making the purchase. For example, a consumer may reasonably choose the wrong toothpick if the labels are too similar.
However, in the case of significantly expensive products, the purchaser may closely look at the distinction in price and will be more careful. A consumer who comes across TV brands with similar logos is likely to be more careful about the brand they’re buying. They will not rely on the logo alone to make a purchasing decision.
Marketing Channels Used
In this situation, a court will examine the similarity of the two marks based on the way consumers encounter the marks in the marketplace and the circumstances surrounding their purchase. Evidence can include the relevant market the two products are being sold, the type of business the marks are used for, the methods of advertisement employed by the two parties, and the location where the respective products can be found at stores.
The Intent of Defendant in Selecting a Trademark
The intent is a significant determinant in most trademark infringement cases. If the second brand owner created the trademark to cause confusion or take advantage of the fame of the first trademark, it is strong enough to prove that trademark infringement has occurred. Trademark infringement can be established if the second brand owner had knowledge about the original mark. Consult with trademark agents in the UAE for more information in this regard.
Likelihood of Expansion of Product Lines
The court will assess the likelihood of both companies expanding to compete with each other in the market. It will also examine the possibility of both brands marketing their products to the same consumers to determine the likelihood of trademark infringement. However, this type of assessment is dependent upon the details of the individual case.
Consult with the Best Trademark Agents in Dubai, UAE
Foreign companies must appoint trademark agents in the UAE to proceed with registration as per the country’s trademark law and procedures. Apart from carrying out trademark registration in the UAE, the agents can advise you on how to deal with trademark infringement. However, for better results, you may hire the best IP firms in Dubai such as Jitendra Intellectual Property (JIP).
JIP is one of the top providers of trademark services in Dubai that can boast of years of experience and satisfied clients. Our team is highly qualified and fully equipped to successfully carry out trademark registration, renewal, trademark search and watch services. JIP also deals with international trademark registration through the Madrid Protocol. Secure your trademark with our dedicated trademark agents in the UAE.