An Introduction to Trademark and Copyright Law in the United Kingdom and the United States
Part I – Trademark Law
What is a Trademark?
A trademark is a sign used to distinguish a business’s goods or services from those of other traders. It can consist of letters, words, names, numerals, logos, shapes, colours, or combinations of these elements. In essence, trademarks function as indicators of origin and symbols of reputation.
In the United Kingdom, the legal framework for trademarks is governed by the Trade Marks Act 1994 (TMA 1994), which implements the EU Trade Marks Directive and aligns with international standards under the Paris Convention and the TRIPS Agreement. In the United States, trademarks are primarily regulated under the Lanham Act 1946, codified at 15 U.S.C. §§ 1051 et seq.
Legal Basis and Registration
Under the TMA 1994, businesses may register trademarks with the UK Intellectual Property Office (UKIPO). Once registered, a trademark grants its owner the exclusive right to use the mark in relation to the goods or services covered. Protection lasts 10 years and may be renewed indefinitely.
The leading UK case of Sieckmann v Deutsches Patent- und Markenamt [2002] ECR I-11737 clarified that a trademark must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective.” This principle ensures that trademarks are clearly defined and can be effectively protected.
In the US, the Supreme Court in Qualitex Co. v Jacobson Products Co., 514 U.S. 159 (1995) confirmed that even colours can serve as trademarks if they acquire distinctiveness. This broadened the traditional concept of trademarks, emphasising their source-identifying function.
Trademark Infringement
Trademark infringement occurs when a third party uses an identical or confusingly similar sign for identical or similar goods or services, leading to a likelihood of confusion among consumers.
Under Section 10 of the TMA 1994, infringement can arise in three circumstances:
1. Use of an identical mark for identical goods or services.
2. Use of an identical or similar mark for identical or similar goods or services where confusion is likely.
3. Use of an identical or similar mark with a reputation where unfair advantage is taken of, or detriment caused to, the distinctive character or repute of the mark.
In Interflora Inc. v Marks & Spencer plc [2014] EWCA Civ 1403, the Court of Appeal clarified that using a competitor’s trademark as a Google AdWord could constitute infringement if it affects the trademark’s ability to guarantee origin.
In the US, the key test for infringement was articulated in Polaroid Corp. v Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), where Judge Friendly set out the “Polaroid factors” to determine likelihood of confusion — including the strength of the mark, similarity of the marks, and proximity of the products.
Passing Off
For unregistered trademarks, rights can be protected through the common law tort of passing off. This action prevents one trader from misrepresenting their goods or services as those of another, thereby protecting goodwill and reputation.
The classic test for passing off was established in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (the “Jif Lemon” case), where the House of Lords identified three elements:
1. Goodwill owned by the claimant,
2. Misrepresentation by the defendant, and
3. Damage to the claimant’s goodwill.
Similarly, in the US, the concept of passing off finds its counterpart in false designation of origin under § 43(a) of the Lanham Act, as seen in Two Pesos, Inc. v Taco Cabana, Inc., 505 U.S. 763 (1992), where the Supreme Court held that inherently distinctive trade dress is protectable even without proof of secondary meaning.
Key Takeaway on Trademarks
Trademarks are powerful commercial tools, safeguarding brand identity, reputation, and consumer trust. Registered marks confer significant legal advantages, while passing off remains a vital common law remedy for unregistered rights. Both the UK and US systems share a common goal — to prevent consumer confusion and protect the distinctiveness of brands.
Part II – Copyright Law
What is Copyright?
Copyright is an intellectual property right that grants creators exclusive rights to their original works, such as literary, dramatic, musical, and artistic creations, as well as films, broadcasts, sound recordings, and databases.
In the UK, copyright is governed by the Copyright, Designs and Patents Act 1988 (CDPA 1988). In the US, it is protected under Title 17 of the United States Code, as amended by the Copyright Act of 1976.
Legal Basis and Protected Works
The CDPA 1988 defines protected works broadly, extending to computer programs and architectural designs. Copyright protection arises automatically upon creation; no registration is required.
The principle that copyright subsists in original works was affirmed in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, where Peterson J explained that originality requires that the work originates from the author, not that it be novel.
In the US, the Supreme Court in Feist Publications, Inc. v Rural Telephone Service Co., 499 U.S. 340 (1991) held that originality requires only a modicum of creativity, setting a low but essential threshold for copyright protection.
Rights of the Copyright Holder
Copyright owners have the exclusive right to:
• Reproduce the work,
• Distribute copies,
• Perform or display the work publicly,
• Communicate the work to the public, and
• Create adaptations or derivative works.
These rights were clarified in CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013, where the House of Lords ruled that secondary liability arises only when a party authorises infringement, not merely facilitates it.
In the US, the scope of rights and limitations, including fair use, was addressed in Campbell v Acuff-Rose Music, Inc., 510 U.S. 569 (1994), which held that parody can constitute fair use even if done for profit.
Proving Copyright and Duration
Since copyright arises automatically, creators should maintain dated drafts or digital records to prove authorship. Under the CDPA, copyright typically lasts 70 years after the author’s death, mirroring the US term for most works.
The Berne Convention ensures reciprocal recognition of copyright between the UK, US, and other signatory nations.
Key Takeaway on Copyright
Copyright protects creativity and innovation by granting authors exclusive rights, while also balancing public access through exceptions such as fair dealing (UK) and fair use (US). Awareness of these rights is vital for artists, educators, and businesses alike.
Conclusion
Trademark and copyright laws are cornerstones of modern intellectual property protection. In both the UK and the US, these laws aim to foster innovation, safeguard commercial identity, and encourage creativity.
From Interflora to Feist Publications, and from the Jif Lemon case to Campbell v Acuff-Rose, courts have continually shaped the balance between private rights and public interest.
For entrepreneurs, creators, and academics, understanding these twin pillars of IP law is not merely advantageous—it is essential for thriving in an increasingly knowledge-driven global economy.
This writer, Astrid is a pupil barrister in Malaysia. She has a keen interest in Employment and Constitutional Law and will be pursuing this interest in her work as a pupil barrister.
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