Trade mark infringement
- Himanshu Dasare
- Updated: Wed, 14th Dec 2016
Trade marks are core to establishing the brand. We act for businesses accused of trade mark infringement to defend their position. Equally we act for those seeking to enforce their trade mark rights. We often become involved firstly in managing trade mark registration which is the precursor to enforcement and revenue generation.
Our trade mark infringement services include:
We solve problems across a wide range of sectors using our expertise with trade mark law and enforcement. Some of our businesses are start ups and others are more established. In all cases, our advice is tailored to address the risks proportionately.
Enforcement of trade marks
Trademarks communicate intellectual and emotional values, aspirations and messages about your business, products and services. A trade-mark distinguishes your business’ products and services from competitors.
What trade marks can be enforced?
The trademarks rights can be registered or unregistered. A trade mark is a sign that is used to distinguish your business from those of others. The following rights can be enforced:
- Group of words, label, slogan, name, group of letters;
- Logo, symbol, design; distinctive package, 3D mark;
- Domain name;
- Gesture; or
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. Our portfolio management service does include registration.
Rights capable of enforcement
The holder of a trade mark can enforce:
- An exclusive use of the trade mark in connection with 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 who is using:
- A similar or identical goods without authorisation,
- Where the use has caused, or is likely to cause, confusion.
Enforcement 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 is that ‘a man should not sell his own goods under the pretence that they are the goods of another man’.
Test for establishing a passing off claim
Passing off involves a three-part test. There must be:
- Goodwill attaching to the trade mark;
- 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
- Damage to the original owner such as:
- loss of profit;
- damage to reputation; and
- loss of an opportunity to expand.
The legal process to enforce trade mark rights
If you discover that your trade mark is being infringed there are immediate steps to take. Ultimately, the UK courts do recognise trade marks and the losses suffered where they are infringed. Trade mark infringement can be dealt with at the IPEC – a court designed for speed and sensible management of costs.
Applications can be made to IPEC 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 through a process of negotiation and threats of damages claims, resolution to the infringement of trade marks can be found outside of court. Solutions outside of court are encouraged by the courts including IPEC as they save time and money.
We do achieve settlement agreements whereby the infringer agrees not to repeat. A well drafted settlement agreement means is there is a repeat, an injuction against the infringer is more likely to be issued by IPEC or the High Court without delay. If the IPEC grants the injunction the owner of the trade mark can recover costs in the matter.
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 a 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.
- 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 the IPEC views the status of a sole director to mean that the director is responsible for all 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 IP infringement.
Stopping trade mark infringement
If you discover that your trade mark is being infringed there are immediate steps to take. Delay does risk a potential inability to demonstrate a “passing off” claim. Sometimes it is appropriate to immediately apply for an interim injunction to immediately stop the infringer’s use. Another option is to instruct a suitable expert to provide a written opinion. That expert opinion will help us scale the dispute and provide you with an objective viewpoint on chances of success. We will tell you what can be done to meet your objectives.
Opposing trade mark applications
A trade mark application once applied for registration could be opposed to stop a published trade mark going on to become a registered trade mark. We can assist you in your opposition which could be for the entire or part of the trade mark application.
An unregistered trademark holder can oppose a trademark registration application.
Type of trade mark opposition
The types of matters heard at the UK Trade Mark Tribunal are:
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 UK Trade Mark Tribunal
The route to appeal a decision of the Tribunal is divided as follows:
- Appointed Person; or
- High Court, Court of Appeal and Supreme Court.
Considerations on appeal of a trade mark dispute
An appeal to an Appointed Person is relatively inexpensive process but its decision is final and cannot be appealed to a higher body. We can work discretely in the background to help you present the best case.
The Court’s can be costly and could taker longer to decide but its decision could be appealed to the highest authority the Court of Justice of the European Union. We will take you through the issues.
Benefits of early opposition of a trade mark application
An early opposition to a potential trade mark application would assist you in maintaining monopoly of use of your trade mark and preventing applications that are made to resemble or closely resemble your trade mark.
Our trade mark enforcement track record
Trade mark registration is not limited to the registration process. To be effective the registration needs to be correct, monitored and renewed. We specialise in dealing with complex issues. We also provide the follow on service you need to ensure that your brand is maintained and protected.
Registration of trade marks
- Registered confectioners’ new product as a trade mark, based on acquired distinctiveness.
- Registered sports manufacturer’s portfolio of unregistered trade marks, based on acquired distinctiveness and goodwill. Our quick registration protected their trade marks from third party use.
Defending allegations of trade mark infringement
- 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.
Trade mark portfolios
- Renewed trademark portfolio for a mobile phone service provider’s and its subsidiaries.
- Managed computer software company’s trade mark portfolio. We located overseas entities that held similar marks and removed their trademark registrations.
- 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.
We appreciate the commercial considerations surrounding intellectual property registration. We register new trademarks, renew existing ones and protect intellectual property.
Our geographical scope for trademark registration and protection covers the UK, EU and elsewhere in the world. We protect your rights globally through our network of international lawyers.
Trademark law is rapidly changing. We enforce,, exploit & defend trademarks. Our expertise means your revenues will be protected as far as possible.. Why not email or call to arrange an informal discussion.