The famous American hard rock band, Guns N’ Roses, are taking legal action against a Texas based gun store for trademark infringement.

‘Texas Guns And Roses’ is a Texas based online store that sells firearms, ammunition related apparel along with flowers. The American rock band, Guns N’ Roses (GNR), has filed a trademark infringement claim against the store for damages whilst alleging the store created its name “for the purpose of confusing consumers into believing that it was connected or associated with, or licensed by, GNR.”

Local newspapers have stated that despite GNR’s numerous attempts of sending cease and desist letters to the store in 2019, the store continues to “intentionally trade on GNR’s goodwill, prestige and fame without GNR’s approval, license or consent”. The store’s attorney has told local news that “There’s never been any confusion and they have no evidence of confusion. This is an attempt to run up costs and burn us out“. However, GNR have requested the store to change its name and pay damages for the alleged trademark infringement.

What is a trademark?  

A trademark is any sign which can distinguish the goods and services of one trader from those of another. A sign can include for example, words, logos, pictures, or a combination of these. A trademark is essentially a badge of origin which is used so that customers can recognise the product of a particular trader. They are therefore closely associated with business image, goodwill and reputation which is demonstrated in the Guns N’ Roses case mentioned above. Amongst many others, top trademarks include Apple, Microsoft, Coca-Cola and Kellogg’s.

Trademark Infringement

The Trade Marks Act 1994 (TMA) implemented the 2008 Trade Marks Directive and the 2015 Trade Marks Directive. A simple explanation of a trademark infringement is where a registered trade mark is used in the course of trade without the proprietor’s consent. The TMA uses the following instances as examples:

Section 10 (1) Trade Marks Act the sign used by the unauthorised third party is identical to the registered trade mark and is utilised in relation to goods or services which are identical with those for which the trade mark is registered.

The sign used by the infringer is:

• identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered;
• or similar to the registered trade mark and used in relation to goods or services which are identical with or similar to those for which the trade mark is registered.

Section 10 (2) Trade Marks Act in each case mentioned above, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association. In the case of GNR mentioned above, GNR did not want to be associated with the defendant given the nature of Texas Guns and Roses’ business. 

Section 10 (3) Trade Marks Act where the trademark used by the infringer is identical with or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

To establish infringement, it is necessary to establish the following key elements:

• use of a sign e.g. affix the sign to goods or their packaging, use the sign on business papers and in advertising or offer or expose goods for sale.
• in the course of trade i.e. in the context of any commercial activity with a view to economic advantage, as opposed to for private or domestic purposes.
• in relation to goods or services i.e. use that jeopardises or is at risk of jeopardising one of the essential functions of a trade mark.

Breach of Trademark Law

There are a vast range of remedies available to the proprietor of a registered trade mark if successful in proving trademark infringement. These include:

• damages or an account of profits
• an order for erasure, delivery up or destruction of infringing goods, materials, and articles as appropriate
• an injunction to restrain future acts of infringement
• dissemination and publication of judgment
• contribution to legal costs

 Defences to Trademark Infringement Claim

The TMA, specifically s.11 provides exceptions to trade mark infringement claims which could apply even if the trade mark is already registered. In other words, you may be able to use a trademark and successfully defend an infringement claim. These include the following:- 

• the use of your own registered trade mark for goods/services for which the mark is registered
• the use of your own trademark which is the name and address of the company – this must be in accordance with honest practices in industrial or commercial matters and only applies to an individual’s name and not the name of a company
• the use of signs or indications which concern the characteristics of goods/services e.g. quantity, quality, intended purpose, value, geographical origin, time of production (provided the use is in accordance with honest practices in industrial or commercial matters)
• if the name is for the purpose of identifying or referring to goods or services as those of the registered trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service (provided the use is in accordance with honest practices in industrial or commercial matters)
• use of an earlier trade mark e.g. EU trademark which has already existed prior to the filing of a UK trade mark i.e. in a particular locality

 For further advice and assistance please contact our Business Services Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk