Trade Mark Infringement Bundle: Evidence and Court Requirements

Understanding Trade Mark Infringement in the UK

The Trade Marks Act 1994 governs registered marks (originally enacted to implement the EU Trade Marks Directive); unregistered marks are protected by the tort of passing off. If you hold a registered trade mark and someone uses an identical or confusingly similar sign in the course of trade, you may have grounds for an infringement claim.

What separates a strong infringement case from a weak one is rarely the underlying law — it is the quality of the evidence. And the quality of the evidence, as the court sees it, depends heavily on how that evidence is organised and presented in the trial bundle.

This guide walks through the essential components of a trade mark infringement bundle, from proving your registration to quantifying your losses.

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Which Court Hears Trade Mark Infringement Claims?

Choosing Your Forum

For most small and medium-sized businesses, the IPEC multi-track offers the best balance of procedural rigour and cost control. The £60,000 / £30,000 costs caps (CPR 46.21(1)) mean that even if you lose, your exposure to the other side's legal costs is limited.

The choice of court affects your bundle requirements. IPEC has specific case management procedures — including a split trial, with liability decided first and any inquiry into damages or account of profits later (IPEC Guide Annex B para 1) — that influence what documents you need and when.

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Essential Bundle Components

Section 1: The Registered Trade Mark

The foundation of any infringement claim is your registration. Without it, you are limited to a passing off claim (which has different, and generally more onerous, evidential requirements).

Documents to include:

• Trade mark registration certificate — obtained from the UK Intellectual Property Office (UKIPO) or downloaded from the online register
• Specification of goods and services — the full list of classes and descriptions covered by the registration
• Registration details — filing date, registration date, renewal status, any limitations or disclaimers
• Priority or convention documents — if claiming priority from an earlier foreign filing
• Assignment or licence records — if you acquired the mark by assignment or hold an exclusive licence

Why this matters: The defendant may challenge the validity of your registration, argue that it should be revoked for non-use, or contend that the specification does not cover the goods or services at issue. Having the complete registration record in the bundle pre-empts these arguments.

Section 2: Evidence of Use and Reputation

Under section 10 of the Trade Marks Act 1994, the scope of your protection depends partly on the reputation of your mark. For claims under section 10(3) — use of an identical or similar sign that takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark — evidence of reputation is essential.

Even for standard section 10(1) and 10(2) claims, evidence of use strengthens your position, particularly if the defendant argues that your mark has not been genuinely used or that confusion is unlikely.

Documents to include:

• Sales figures — annual turnover for goods or services sold under the mark, broken down by year
• Advertising and marketing expenditure — annual spend on promoting the mark, with examples of advertisements
• Market share data — your position within the relevant market
• Media coverage — press articles, reviews, and features mentioning your brand
• Duration of use — evidence showing how long the mark has been used continuously
• Geographic extent — evidence of use across the United Kingdom (not just one region)
• Customer testimonials or survey evidence — demonstrating recognition and association

Section 3: Evidence of the Infringing Sign

This is where you prove what the defendant has actually done. The court needs to see the allegedly infringing sign as it appears in the course of trade.

Documents to include:

• Screenshots of websites, social media profiles, or online marketplace listings showing the infringing sign — dated and showing the URL
• Photographs of physical products, packaging, shop signage, or promotional materials
• Test purchase evidence — receipts, delivery confirmation, and photographs of goods received
• Trade directories or business listings showing the defendant's use of the sign
• Domain name registration records — WHOIS data if the sign is used as a domain name
• Advertising materials — brochures, leaflets, or digital advertisements used by the defendant
• Wayback Machine archives — showing historical use of the sign on the defendant's website

Practical tip: Date everything. A screenshot without a date is significantly less persuasive than one showing a clear timestamp. If you are taking screenshots manually, include the browser address bar and the date/time in the capture.

Section 4: Confusion Evidence

For claims under section 10(2) — where the sign is similar (but not identical) to the registered mark and is used for similar goods or services — you must demonstrate a likelihood of confusion on the part of the public.

Documents to include:

• Instances of actual confusion — emails from customers who mistakenly contacted you thinking they were dealing with the defendant, or vice versa
• Misdirected correspondence — post, invoices, or enquiries sent to the wrong party
• Social media confusion — comments, reviews, or posts where consumers have confused the two brands
• Survey evidence — if you have commissioned a consumer survey (note: the court has strict requirements for survey methodology; see Interflora v Marks and Spencer [2012] EWCA Civ 1501)
• Expert evidence — only where the market is one the judge is unfamiliar with; whether confusion is likely is for the judge, from the viewpoint of the average consumer (esure Insurance Ltd v Direct Line Insurance plc [2008] EWCA Civ 842 at [62])

Important: Likelihood of confusion is assessed globally, taking into account all relevant factors. You do not need to prove that most consumers would be confused; if a significant proportion of the relevant public is likely to be confused, the court may find infringement (Interflora Inc v Marks and Spencer plc [2014] EWCA Civ 1403 at [129]; Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41 at 34).

Section 5: Remedies and Quantum

Once you have established infringement, you need to prove what you have lost — or what the defendant has gained.

Damages:

• Evidence of lost sales directly attributable to the infringement
• Evidence of price erosion (if you were forced to reduce prices to compete with infringing goods)
• Evidence of damage to the mark's reputation (particularly for inferior goods sold under a similar mark)
• Licence fee evidence — what you would have charged for a legitimate licence

Account of profits:

• The defendant's financial records (obtained through disclosure) showing profits attributable to the infringement
• Evidence identifying which element of the defendant's profits is attributable to the use of the infringing sign

Injunctive relief:

• Evidence that the infringement is ongoing or likely to recur
• Evidence that damages alone would be an inadequate remedy

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Structuring the Bundle

Pagination and Indexing

Every page in the bundle must be numbered sequentially. The index should list each document by name, date, and page reference. For IPEC cases, bundles should be paginated continuously from start to finish, or file by file (IPEC Guide Annex C para 7).

Chronological vs Thematic Ordering

Trade mark bundles work best with a thematic structure (registration, use, infringement, confusion, remedies) rather than a strictly chronological one. Within each thematic section, documents should be in chronological order.

Electronic Bundles

Courts increasingly expect electronic bundles in PDF format with:

• Bookmarks corresponding to each document and section
• Optical character recognition (OCR) so the judge can search the text
• Hyperlinked index allowing one-click navigation
• A4 page size, portrait orientation
• No password protection or editing restrictions

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Streamlining Your Bundle Preparation

Assembling a trade mark infringement bundle involves coordinating multiple document types — registration certificates, commercial evidence, web screenshots, financial records, and witness statements. Each must be correctly formatted, paginated, and indexed.

BundleCreator.co handles the technical formatting automatically, generating pagination designed to follow the IPEC Guide, bookmarked navigation, and hyperlinked indices so that you can concentrate on building your case rather than troubleshooting PDF software. If you are preparing for an IPEC hearing or a Chancery Division trial, a professionally formatted bundle signals that your case deserves to be taken seriously.

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Common Pitfalls in Trade Mark Bundles

1. Relying Solely on the Registration Certificate

A registration certificate proves you own the mark. It does not prove infringement. You must separately demonstrate that the defendant's sign is identical or similar, that it is being used in the course of trade, and that there is a likelihood of confusion (or, for section 10(3) claims, unfair advantage or detriment).

2. Failing to Date Evidence

Undated screenshots and photographs are weak evidence. Courts need to know when the infringement occurred, how long it lasted, and whether it is continuing. Always include timestamps, file metadata, or contemporaneous records confirming the date.

3. Ignoring the Defendant's Specification

Trade mark infringement under section 10(2) requires the defendant to be using the sign in relation to goods or services that are identical or similar to those covered by your registration. If your mark is registered for clothing but the defendant is using a similar sign for software, you may struggle to establish infringement under section 10(2) — though section 10(3) may still be available if your mark has a reputation.

4. Overestimating the Strength of Survey Evidence

Survey evidence can be powerful, but poorly conducted surveys are regularly criticised and excluded by the courts. The Whitford Guidelines and subsequent case law set out strict requirements for survey methodology. If you are considering a survey, take specialist advice before commissioning it — the cost of a flawed survey is wasted money and weakened credibility.

5. Missing the Revocation Trap

A registered trade mark can be revoked if, within the five years following completion of its registration procedure, it has not been put to genuine use in the UK for the goods or services for which it is registered, or if that use has been suspended for an uninterrupted period of five years, in each case without proper reasons for non-use (TMA s.46(1)(a)–(b)). Where the registration procedure was completed more than five years before the claim is brought, the defendant can require you to prove genuine use in the UK in the five years before the claim, for the goods or services you rely on, or proper reasons for non-use (TMA s.11A(2)–(3)). Before issuing proceedings, audit your own use of the mark and ensure you have evidence of genuine use for all the goods and services in your specification — or be prepared to narrow the specification voluntarily.

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Frequently Asked Questions

Can I claim trade mark infringement if my mark is not registered?

Not under the Trade Marks Act 1994. However, you may have a claim in passing off, which protects unregistered goodwill. Passing off has different evidential requirements — you must prove goodwill, misrepresentation, and damage — but can be brought in the same proceedings alongside a registered trade mark claim.

What is the difference between damages and an account of profits?

Damages compensate you for your own losses caused by the infringement. An account of profits strips the defendant of the profits they made from the infringement. You must elect one remedy or the other — you cannot claim both. The election is usually made after the court has found infringement, once you have seen the defendant's financial disclosure.

Can I get an interim injunction to stop the infringement immediately?

Yes, but the threshold is high. The court applies the American Cyanamid test, as summarised in Planet Art LLC v Photobox Ltd [2019] EWHC 1688 (Ch) at [64]: a serious question to be tried; the adequacy of damages; a cross-undertaking in damages; and the balance of convenience. Interim injunction applications are heard on an urgent basis, sometimes within days.

What if the defendant is based outside the UK?

What matters is whether the defendant's use of the sign is targeted at UK consumers — for example, offering goods to UK consumers online (Lifestyle Equities v Amazon [2024] UKSC 8). Serving the claim on a defendant outside the UK may need the court's permission (CPR Part 6). Enforcement of any judgment abroad is a separate question and may require further legal steps.

Do I need a barrister for an IPEC hearing?

No. A party may represent itself; solicitors, patent and trade mark attorneys with litigation rights, and barristers may act (IPEC Guide 1.7).

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Stevie Hayes writes about intellectual property litigation, court bundle preparation, and access to justice for BundleCreator.co — the UK's dedicated court bundle preparation platform.

Related reading

• Passing Off Claims: Evidence Requirements and Bundle Preparation
• Design Right Infringement: UK Registered and Unregistered Design Protection
• IPEC Small Claims Track: How to Prepare Your Bundle