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Look Before You Leap With Trade Names

The first Intellectual Property Enterprise Court case heard outside London took place recently, when the court sat in Birmingham at the request of both parties involved in the dispute. It concerned an allegation of improper use of a registered trade mark relating to mental health training.

The case arose when an NHS trust developed a mental health approach that used the same acronym (RAID) that had been trade marked by a consultant psychiatrist, who feared the trust's attempts to spread its training would interfere with his own completely different programme. He alleged that the trade mark had been infringed and that the trust had benefited from 'passing off' its service by using his trade mark to gain take-up for its own service.

The Court's approach illustrates the factors that have to be established in such cases, the main ones of which in this case were:

  1. Is there infringement?
  2. Is the defendant's sign identical or similar to the registered trade mark?
  3. Has the defendant used the sign in the course of trade in relation to education and training services relating to health and related printed matter?
  4. Are the goods/services provided by the defendant under the sign identical, and/or similar to the goods/services specified in the registered trade mark?
  5. Is there a likelihood of confusion between the registered trade mark and the defendant's sign?
  6. Is the defendant's use of its sign detrimental to the distinctive character and/or repute of the registered trade mark?
  7. Was there 'passing off'?
  8. Does the defendant's use of its sign amount to a misrepresentation to the public? and
  9. Have such misrepresentations caused damage to the first claimant?

In this instance, the psychiatrist succeeded in his claim.

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    The lesson to be learned is that before any trading style is adopted, it is wise to make a thorough check to ensure that there are no potential trade mark issues.

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