Infringement: The Scheme of Section 29

In one line

Section 29 is nine sub-sections creating six distinct wrongs, and the first task in any problem is to decide which one the facts fall under.

In the wording a student can write in an exam: section 29 defines infringement of a registered trade mark; sub-sections (1) to (3) deal with identical and similar marks on identical and similar goods, sub-section (4) with dilution of a mark with a reputation on dissimilar goods, sub-section (5) with use as a trade name, sub-sections (6) and (9) with what use means, sub-section (7) with applying the mark to labelling and packaging material, and sub-section (8) with unfair advertising.

The gateway words

Every limb opens the same way, and the words are a filter that disposes of many problems before any comparison of marks begins.

"A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use". So a registered proprietor cannot infringe, and neither can a permitted user within section 2(1)(r). That is why a licensee's use is not infringement and why section 28(3) matters between two proprietors.

"Uses in the course of trade". Private use, and use that is not in trade, is outside the section altogether.

And in sub-section (1) only, a further filter: "in such manner as to render the use of the mark likely to be taken as being used as a trade mark". Use of a word otherwise than as a badge of origin does not infringe under that sub-section.

Sub-section (1): the basic case

A registered trade mark is infringed by a person who uses in the course of trade a mark which is identical with, or deceptively similar to, the registered mark, in relation to goods or services in respect of which the mark is registered, and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Note the scope. The goods must be those for which the mark is registered, and the mark must be identical or deceptively similar within section 2(1)(h). This is the sub-section under which a plain counterfeiting case is pleaded.

Sub-sections (2) and (3): the three combinations, and the presumption

Sub-section (2) catches use of a mark which, because of:

• (a) its identity with the registered mark and the similarity of the goods or services covered by the registered mark; or
• (b) its similarity to the registered mark and the identity or similarity of the goods or services; or
• (c) its identity with the registered mark and the identity of the goods or services,