Trade mark infringement

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Trade mark infringement

Trade mark infringement claims carry increased commercial consequences as the power of the branding behind a trade mark grows. We solve problems for businesses accused of trade mark infringement. Equally, we work with businesses suffering as a result of trade mark infringement. 

Some of our businesses are start ups and others are more established. In all cases, our advice is tailored to address the risks proportionately.  We are specialists in the law relating to trade mark infringement and other forms of intellectual property infringement involving assets such as copyright, design rights and domain names.

Our focus sectors are branding, merchandising and on-line trading.

Opposing trade mark applications with the IPO

The best way of stopping trade mark infringement is to stop the trade mark from being registered in the first place. The Intellectual Property Office (IPO) in the UK deals with registrations of trade marks.

Challenge to the IPO can be made to whole or part of a trade mark

You can lodge an opposition to a proposed new trade mark with the Intellectual Property Office relating to the entire or part of any trade mark application.  An unregistered trademark holder can oppose a trademark registration application.

Types of trade mark challenges to the IPO

The types of matters heard by the IPO following a challenge are:

  • Opposition – claims the trade mark should not be registered;
  • Revocation – claims that a registered trade mark should be withdrawn as it infringes an existing trade mark;
  • Invalidation – similar to revocation claims in that the basis is an existing trade mark should no longer operate; and
  • Rectification – requests to correct a trade mark.  Often used as a solution to prevent trade mark infringement.

Grounds for dispute

The most common grounds to dispute a trade mark application are:

  • Descriptive of use of services and goods;
  • Generic term;
  • Non-distinctive; and
  • Existence of earlier trade mark.

Appeal from the IPO

The route to appeal a decision of the IPO is divided as follows:

  • Appointed Person; or
  • High Court, Court of Appeal and Supreme Court.

Appointed person – considerations on appeal of a trade mark dispute

An appeal to an “Appointed Person” is a relatively inexpensive process.  But the decision is final meaning it cannot be appealed. We can work discretely in the background to help you present the best case.

Appealing from the IPO to a court is often more costly and could taker longer to decide than the “Appointed Person” route.  But, appeals to court are a gateway to having points of law determined by the highest authorities.

Registered trade mark infringement

You will usually be in a stronger position when it comes to enforcing a trade mark or defending an alleged infringement if your trade marks are registered.  The holder of a trade mark can enforce:

An exclusive use of the trade mark

Exclusive use covers the goods and services for which it is registered.

The right to commercially exploit the trade mark

For example to:

The right to sue anyone for trade mark infringement

For example the right to pursue anyone who is using:

  • A similar or identical goods without authorisation, or
  • Where the use has caused, or is likely to cause, confusion.

Scope of trade mark infringement

The trademarks rights can be registered or unregistered.  Ownership of a trade mark can extend over:

  • Group of words, label, slogan, name, group of letters;
  • Logo, symbol, design; distinctive package, 3D mark;
  • Domain name;
  • Gesture; or
  • Jingle

Infringement of unregistered trade marks- passing off

It is harder to enforce an unregistered trademark than to protect a registered trademark. Enforcing  an unregistered trademark relies on the common law rules of “passing off”.

  • The underlying principle of passing off trade mark infringement claim is that ‘a man should not sell his own goods under the pretence that they are the goods of another man’.

If you discover that your trade mark is being infringed there are immediate steps to take. Delay does risk a potential ability to demonstrate a “passing off” claim.

Test for establishing a passing off claim

Passing off involves a three-part test. There must be:

  1. Goodwill attaching to the trade mark;

  2. A misrepresentation directly or indirectly to the public as to ownership of the trade mark

    • It doesn’t matter if the misrepresentation is intentional or not; and
  3. Damage to the original owner such as:

    • loss of profit;
    • damage to reputation; and
    • loss of an opportunity to expand.

Defending trade mark infringement allegations

We have years of experience in batting off allegations of trade mark infringement. Often a robust response pointing out the difficulties the claimant will face is sufficient.  Many cease and desist letters are automatically generated using computer and artificial intelligence with little human intellectual thought behind them. We find such claims are often unfounded and without merit.

Building the defence

We find pointing out the stumbling blocks the claimant will have to get over is a good starting point. That is where we attack the strength of many trade mark infringement allegations.

In our experience defences can often be built around:

For registered trade marks

  • Insufficiency of evidence;
  • Out of date or obsolete trade mark registrations which do not infringe your trade mark;
  • Inability to prove loss.  Establishing damages is a particularly difficult area; and/or
  • Failure to establish the grounds necessary to apply for an injunction.

For unregistered trade marks – passing off

  • The three stage test to establish a passing off claim is not made out;
  • The party accused of passing off actually does own the trade mark and has some documentary evidence;
  • The claimant cannot establish that it has built up a reputation in the mark; and/or
  • No damage has been suffered.

Special consideration for sole directors

A sole director of a company can be held jointly liable along with the company for trade mark infringement and passing off. This is because a court can view a sole director as having full responsibility for acts done by the company.

A sole director will need to show the court that he did not knowingly participate in, or control, the activities amounting to infringement. If the director is unable to demonstrate this, he may be held personally liable for the trade mark infringement.

Trade mark infringement solutions and recent cases resolved

There are a range of solutions to consider where a trade mark is infringed.  Common solutions we find include:

Injunction to stop the trade mark infringement

Applications can be made to court for an injunction. An injunction ordered by the court means the infringer must stop his infringement or face further court action. If the infringer ignored the injunction issued by the court, the worst case scenario for the infringer is that they could be made bankrupt.

Settlement outside of court

In practice, we find for a great majority of cases, that resolution to trade mark  infringement is often outside of court. Solutions outside of court are encouraged by the courts including IPEC as they save time and money.

We also find that before settlement is achieved there may be a need for robust letters setting out the law relating to the trade mark infringement.  The intention is to warn the opponent of what lies head if the case is not settled.

We do achieve settlement agreements whereby the infringer agrees not to repeat. A well drafted settlement agreement means if there is a repeat, an injunction against the infringer is more likely to be issued by obtained from court without delay.

Recent cases resolved

  • Defended allegations of trade mark infringement for an established fashion retailer, which coincided with a new season’s product launch.
  • Defended trade mark application against a third party’s claim for invalidity. The party alleged bad faith and “monopoly holding” intent. We asserted that our client’s application was made in good faith with commercial intent.
  • Protected community trade mark holder from pan-European infringement by a number of entities.
  • Defended start-up health drinks company against allegations of passing off. We asserted our client’s mark differentiated from the claimants. In addition, we showed the claimant had little goodwill in the mark, therefore no damage had been caused.