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Initial interest confusion

Written by Aasim Durrani on 28 August 2013

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English trade mark law is clear that infringement occurs by use of a sign in trade which is similar or identical to a registered trade mark for similar or identical goods and services and where the relevant public is likely to be confused as to the origin of those goods and services. Initial interest confusion, which has its roots in US law, is a doctrine which provides that where the relevant public is confused by the seller at the time of initial interest in its goods or services, then damage has occurred, even where this confusion has been remedied in the period between the initial interest and the purchase of goods.
 
English law was unclear on this point until relatively recently, with some commentators stating such matters were confined to passing off by false endorsement. This leading case on this point is that of Irvine v Talksport Ltd [2002] EWHC 367 (Ch), in which the claimant was former F1 driver Eddie Irvine.
 
The position was clarified by Mr Justice Arnold in the case of Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch). In his judgment, the judge reasoned that even where no sale had taken place after the initial confusion had been remedied, damage could still occur in two ways. He stated that the reputation of the registered trade mark could be diminished or its distinctiveness could be adversely affected.
 
Sellers should take care to ensure that their goods and services do not mislead the public as to their true origin. They should also not rely on disclaimers to avoid liability, particularly where they are seeking to attract customers by way of a misrepresentation or by using a registered trade mark. As a general rule of thumb, a trade mark with enhanced distinctiveness has the potential to land such a seller in deeper trouble. Where a trade mark is not particularly distinctive, a seller may be able to avoid liability by arguing that the mark does not identify the origin of such goods. However, this argument should not be relied upon to avoid a potential claim for infringement.
 
If sellers are unsure of their position then they are advised to seek legal advice as a matter of priority.
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