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Cease And Desist Letters For Trademark Infringement

Cease & desist letter for trade mark infringement

Trade mark infringement can be a serious matter which needs to be addressed as soon as it is discovered. Companies, or individuals, who infringe a trade mark do not often understand the legal implications of copying or using a mark without permission. On the other side, trade mark owners are also unaware of the process of stopping trade mark infringement. In this post, we will look at the first step taken to stop trade mark infringement. A Cease and Desist letter.

What is a Cease and Desist letter?

A Cease and Desist letter is a document which is served to an individual or business to request they cease from continuing a specific act. It also requires the offending party to correct and/or compensate the damage that has been done from an offensive act.

Cease and Desist doesn’t just apply to trade mark infringement. It is also used in cases of defamation, harassment and other forms of IP.

The letter serves to point out wrongdoing on the part of another person or entity with a legal justification. The letter is often used to end the wrongdoing which in the case of a trademark infringement would be copying or using a trademark unlawfully.

Is a Cease and Desist letter legally binding?

A Cease and Desist letter is not legally binding. It represents an opinion of a person, usually a trade mark attorney or intellectual property (IP) solicitor hired by the aggrieved person or party.

The letter isn’t an indication of court action being pursued, but is likely to be the next course of action if the letter doesn’t achieve its intended purpose.

Using a Cease and Desist letter in a trade mark infringement matter

If your trade mark is copied or used by someone else without permission, the matter needs to be investigated first to see if it is a case of trade mark infringement. Once established, the very first step is to send the letter to the alleged trade mark infrniger to stop the trade mark infringement. In many cases, this is often enough to stop the offending party.

The letter should include details of the trade mark. The name, logo or slogan. When the trade mark was filed, what class or classes it covers and the date you found the trade mark being unfairly used or copied. You should include all proof that you have found of the infringement to strengthen your case. Finally, the letter should include a section on what the offending party can do to rectify the situation.

Although a Cease and Desist letter can be written by anyone. It is more appropriate for a trade mark attorney or intellectual property (IP) solicitor to draft it because they have the knowledge and understanding of the area to make a more compelling case for infringement.

Trade Mark Infringement Process

Paypal infringement matter

Trade mark infringement is far more common than most business owners would expect. Brands that start developing a good reputation in the marketplace are often copied or imitated by other companies trying to capitalise on their growing goodwill. In this post, we will discuss what the trade mark infringement process involves and how a company can enforce their trade mark rights.

What is trade mark infringement?

If a company uses an identical or similar trade mark for the same set of goods or services to a registered trade mark, they are committing trade mark infringement. Due to the similarity, the trade mark can cause confusion in the public. Consumers might believe that the product or service being offered by the company bares a relation to the registered trade mark.

This can lead to a number of issues for the company with the registered trade mark. It can cause a decline in their sales. Their reputation can be affected if the similar product or service is of sub-par category thus being detrimental to a mark’s distinctive character leading to dilution of their trade mark.
A good example of trade mark infringement by an identical logo can be seen below

UNIQLO trade mark copy MINISO

When a trade mark has significant reputation, any same or similar mark will also be counted as an infringement regardless of what products or services are being sold. A company cannot use a similar sounding name or logo to a reputable trade mark.

How do you address trade mark infringement?

Once a clear case of trade mark infringement has been established, the company with the registered trade mark has to enforce its protection. This can be done in a number of ways which have been outlined below.

Mediation

An often necessary step in most legal matters, mediation can be used to come to an agreeable settlement between two parties. It is a cheaper and quicker alternative to court action. The UK Intellectual Property Office (IPO) provides accredited mediation services covering a range of intellectual property rights.

Using Intellectual Property Enterprise Court (IPEC)

IPEC has been created to help small and medium-sized companies as well as individuals to resolve intellectual property (IP) issues in a more affordable manner. A trade mark infringement matter would be covered under the IPEC.

IPEC offers two procedures, which are listed below.

  • IPEC (Small Claims Track): Claims less than £10,000. No legal representation is required.
  • IPEC (Multi Track): Recoverable costs are cappeTraded at £50,000, while the value of damages claim is capped at a maximum of £500,000.

Any claim worth more than £500,000 in damages or lost profits will have to be taken to the High Court.

How would a trade mark infringement process be started?

If a company finds a clear case of trade mark infringement, it is recommended that they contact a trade mark attorney to discuss the matter. In doing so, they can learn what the steps will be in order to deal with the matter.

As a first step in stopping trade mark infringement, the infringer must be notified of the issue through a cease and desist letter. The purpose of this is to stop them from continuing the use of their trade mark and understand the consequences they can face as a result of this infringement.

Mediation services can be used at this point as well as an attempt made to amicable resolve the matter directly between the two parties. This is often requested before court action is taken and is seen as a positive step.

Once no resolution can be achieved either directly or through mediation. The next step is to escalate the matter in the court. This is time consuming and costly.
One of the most important aspects of trade mark infringement is gathering evidence of losses, damage to reputation or any other issues caused by it. This can be difficult, especially proving financial losses as a result of trade mark infringement. Some methods of quantifying losses are through researching website traffic, brand recognition online and obtaining company financial information, if possible.

The same applies for proving damages to reputation. If the infringer has received negative feedback and reviews publicly, it can be used to show damage to reputation.

If you were to come across a case of trade mark infringement, it would be best to start by contacting a trade mark attorney or intellectual property solicitor and then following the steps outlined above.

Trade Mark Infringement on Amazon

Amazon's website

One of the more common questions that we get asked is about trade mark registration and infringement on Amazon, the popular online marketplace. As one of the most visited websites in the world and the biggest e-commerce site, Amazon offers various methods of reporting and dealing with trade mark infringement which we will discuss in this post.

Sellers rights on Amazon

As a seller, Amazon doesn’t automatically give you exclusive rights over a name or logo which you use as your brand. If you want to protect your brand name or logo on Amazon, you have to register it as a trade mark in the country you sell your goods in through Amazon. If you were selling your goods on Amazon UK, you will need to register your trade mark in the UK to enforce its protection.

How would you deal with trade mark infringement on Amazon?

If you come across another seller who is using an identical or even similar brand on Amazon, you can report trade mark infringement on Amazon using their Report Infringementpage. However, you need to have a registered trade mark in order to be able to use this reporting tool.

Amazon would review the matter based on the information you provide and make a decision. If there is a clear case of trade mark infringement, Amazon would remove listings of the company infringing on your trade mark, and in some cases remove the entire account. It is up to you to provide the relevant information and we would recommend that you use a trade mark attorney as they would make a better case for you. For this reason, Amazon allows ‘agents’ to report an infringement on their website.

Can brands which do not have a trade mark, do anything against infringement on Amazon?

Without a trade mark, your options are limited to non-existent. You can try to enforce your brand protection using unregistered trade mark rights, but you will need to prove goodwill and reputation in the marketplace. This can be difficult to prove and costly.

Our recommendation is to start the trade mark registration process so that you are able to protect your brand on Amazon.

What is Amazon Brand Registry?

Amazon considers trade mark infringement a serious matter and they have taken steps to help support sellers in protecting their brands. The Amazon Brand Registry is a utility offered by the company to help sellers manage and protect their trade marks on Amazon. To register for this, you will need a registered trade mark to be able to gain the benefits offered by this service.

To understand Amazon Brand Registry in more detail, you can read the in-depth post written by Jungle Scout discussing the registry.

How to use your trade mark after registration?

A common question that we get asked is how should a trade mark be used once you have obtained registration. Luckily, there are guidelines available for this, and I’ll summarise them in this post.

Imagine a customer looking to buy a new pair of sunglasses. She finds the section for her favourite brand only to notice that the font in their logo is different. This can cause confusion and might end up costing the company a sale. Incorrect use of a trade mark can also jeopardise its validity and protection against copycats.

Having and following guidelines for trade mark usage are essential in building a brand. After all, you’d want strong brand recognition. Most importantly, proper use of a trade mark will protect it from unlawful use. So how should you use a trade mark?

A logo trade mark and its consistent use

The colour, format, font and placement of a logo is very important for branding. If your logo was filed with a specific colour scheme, then it should always be used in those colours. When providing your trade mark to a third party, you should provide the colour specification (pantone). You should also create and provide brand guidelines on the way your trade mark should be used and printed to everyone using your branding.

The image from University of East Anglia below displays how their logo should be used.

university-east-anglia-logo-guidelines

Using the ® icon in advertising and labelling

The ® icon is used to alert the public that a sign is a protected mark and discourage others from using it. Although not compulsory, you should use it in advertisements and labels because of the wider visibility that these receive. Using it will deter copycats from taking advantage of a trade mark.

A trade mark is an adjective

A trade mark is an adjective so it cannot be expressed as a noun or or verb. An example of this is as follows:

Correct: I had a coffee from Starbucks in the morning.

Incorrect: I had a Starbucks in the morning.

I’ll use another brand to illustrate the point. Ray-Ban would need to be used as follows:

Correct: Buy the latest Ray-Ban sunglasses on sale now!

Incorrect: Latest Ray-Bans are on sale now!

Incorrect use of a trade mark combined with its common use can make it genericised. In this case, a trade mark become so common that they lose their value as a trade mark. This was the case with trade marks such as Hoover, Aspirin and Kleenex. A trade mark being genericised is more common for very well known brands than lesser known ones.

Further guidelines for trade mark use

For greater impact, the trade mark can be distinguished using italic, bold or capitalised letters. It’s also common to monitor the use of your trade marks by third parties. If you license or franchise your brand, it is necessary to keep an eye on how others are using it. Finally, there should be a regular review of your trade marks to see if they need to be registered, licensed or renewed.

If you would like further information about use of your trade mark, please contact us on 020 7791 9050 or email us at trademark@freemanharris.co.uk.

The difference between the trade mark symbols ® and ™

Difference between trade mark symbols

Trade mark filers are often not familiar with the symbols that need to be used with their mark. There are two commonly used trade mark symbols, the TM and the letter R in a circle ®.

What do these trade mark symbols mean?

The TM symbol is used for unregistered marks to inform the public that the word, logo or slogan in question is being claimed as a trade mark. You do not need a trade mark registration to use this symbol with your branding. Use of this symbol is not a guarantee that the mark will be protected by trade mark laws of the country the company trades in. Some companies use the TM symbol while their trade mark application is being processed.

The ® symbol is used to indicate that a mark is registered and provides a legal notice of ownership of a name, logo or slogan. The symbol warns other competitors that the trade mark is registered, and often has a dissuasive role. Any infringement will be considered a breach of trade mark laws.

When to use these symbols?

The TM symbol can be used anytime. The purpose is to inform the public that the company claims the branding as a trade mark. This is useful in dissuading others from copying the mark in the market.

The ® symbol can only be used in the countries where you have successfully registered your trade mark with the relevant trade mark office. In the UK, use of the ® symbol prior to registration is a criminal offence and is discouraged.

Where should these symbols be placed?

It’s common practice to place the symbol on the upper right corner of a mark in superscript. It is also acceptable to place it in the lower right corner if it’s not aesthetically pleasing on the top of the mark. There are no guidelines about the placement of the symbols but it’s strictly advised to follow the normal convention. The symbols cannot be placed on the left, top of bottom of the mark.

If you have any questions about this matter, please contact us and we’ll be happy to help.

N.B: Use of the TM and ® symbols is optional. Names, logo or slogan without the ® symbol isn’t an indication of a brand not being registered as a trade mark.

So, what happens to the EU trade mark if Brexit happens?

EU and UK flag, what happens to trade marks in case of Brexit

The upcoming European Union (EU) referendum is, as expected, dominating the news. The financial markets have been reacted badly to a strong possibility of a British exit, or Brexit, from the EU. There are a lot of questions that have been raised over various matters relating to this ‘Brexit’. What will happen to trade, travel and in our specific case trade marks if Britain decides to leave the EU.

As many others have stated, there is great uncertainty in regards to what will happen post Brexit. We are also not clear of the exact changes that will occur, but we can speculate like all others have or are doing so.

One thing is for certain, a vote for Brexit will have significant implications for trade marks. In this post, we’ll try to answer the questions which you might have albeit speculatively.

Would EU trade marks still apply to the UK?

In simple words, no.

However, post Brexit, there will a long period of negotiation in which the British government would negotiate all matters with the EU. Either party might provide new legislations to continue the protection of existing EU trade marks in the UK, but that all depends on the negotiations that will be undertaken. If there are no new legislations provided, then all companies trading in the UK would be required to file a national application. That is if they only had a EU trade mark.

It is understood that the provisions and regulations provided by the EU Intellectual Property Office (IPO) will no longer be in effect so any new EU trade mark applications will not cover UK.

Can UK trade mark attorneys represent clients before the EU IPO?

Again, that would be a no.

The Institute of Trade Mark Attorney (ITMA) has suggested that a large amount the EU trade mark and design registration work will be moved to mainland Europe from the UK. The following effects have been listed:

  • UK-based trade mark practitioners would be unlikely to file EU Trade Marks/EU designs because they would be unable to represent clients before the EU Intellectual Property Office, unless the UK was to join the European Economic Area.
  • Over time UK trade mark and design law would diverge from EU law

A change in the law and removal of EU trade mark courts from the UK would most likely be the end of EU IPO work for UK based trade mark law firms and attorneys.

Will there be any changes to the cost?

Apart from the increase in costs of filing a UK and an EU trade mark separately, the costs ought to remain the same for the UK and EU trade mark.

The same rules would apply to design registration in the EU.

As stated above, we are speculating the changes that might occur as a result of a Brexit. There is a great deal of uncertainty, which is making everyone jittery. ITMA has stated that this will have a negative effect on trade mark attorneys in the UK and the process would become more complex. However, there might be an increase in UK trade mark filings post a brexit, which could help ease the long term negative impact.

Jose Mourinho’s Trade Mark: Can Companies Own a Name

Jose Mourinho and his trademark with Chelsea

During the recent announcement of Jose Mourinho being signed as the manager of Manchester United, it was revealed that his name is a trade mark owned by Chelsea. This was reported to be a stumbling block which delayed the signing. This raises the question on whether a company can own a person’s name as a trade mark.

The history of Jose Mourinho’s trade mark

Chelsea Football Club filed ‘Jose Mourinho’ as a trade mark in 2005 under various classes. This was a first where a managers name was registered as a trade mark. The popularity and marketability of Jose Mourinho was the reason why they decided to obtain the trade mark. The football manager has been successful in carving out a brand for himself.

Can a company own the trade mark instead of the person?

The owner of the trade mark is the entity that has filed for it to be registered. In this specific case, Chelsea Football Club filed for the trade mark and they would have obtained permission from Jose Mourinho himself. The name is a commercial entity which can be used for trade purposes and that is why it was protected. If a company has the relevant permission, it can file a trade mark and count it as one of their IP assets. From Jose’s perspective, the better way would have been to file a trade mark himself and license it to Chelsea.

Licensing a trade mark instead

A person or company would be better off by obtaining a trade mark and then licensing it out to another party. This is something that would be negotiated by Jose Mourinho’s legal team, but they will have to cover the costs of the transfer as well as potential loss of earnings. Without the permission of the trade mark owner, Manchested United would not be able to use the name on their merchandise or any commercial activity in general.

This is a unique situation, and the parties involved would be able to find solution primarily because of the clout of these Football clubs. They can afford to spend money on legal fees and/or licensing fees to use the trade mark. For smaller companies or ones not so financially able, the whole process would be costly and challenging.

The Chinese Trade Mark Saga – Facebook Wins Trade Mark Case

Facebook wins trademark case in China

While Apple Inc lost its trade mark case in China, Facebook has made headway by winning their trade mark case for its own brand name. A Chinese vegetable oil and potato chips maker called Zhongshan Pearl River registered ‘face book’ in 2014, but the courts in China have revoked the trade mark.

Why did Facebook win while Apple lost its case?

Although Facebook is blocked in China, it is still accessed by a large number of Chinese web users through VPN (Virtual Private Networks). Under Chinese trade mark laws, a global brand has to prove that its trade mark is also well known in China. In Apple’s case, the court decided that the ‘iPhone’ trade mark wasn’t well known, in China, when it was filed by the company.

Proving recognition

Facebook’s founder has been leading a charm offensive to woo Chinese government officials to allow Facebook to operate in China. The brand has been popular in the country for a while and as stated above, it has a sizable user base in the country. This has allowed Facebook to revoke the trade mark filed by the Chinese company.

The Supreme People’s Court decided that Zhongshan Pearl River had “violated moral principles” with “obvious intention to duplicate and copy from another high-profile trade mark”. Very aptly worded judgement from the Supreme People’s Court.

Registering your brand name

Registering your brand name

Registering a brand name can mean two different things. It can be either incorporating your company or registering your trade mark, which would be your brand. The latter is the more common understanding of the sentence ‘registering your brand’.

How do you register your brand?

If by this you mean you are looking to incorporate your company, then you need to visit the Companies House website and follow the process online to form your company. You can use company formation services if you are not comfortable with completing the process yourself. We’d recommend our friends Company Incorporations if you need help with this process.

On the other hand if you want to register your trade mark, then you would have to go through the following steps:

  1. Identify what it is that you want to trade mark. Is it your name, your logo, your slogan or anything unique about your service or product.
  2. Search to see if your trade mark is available. A trade mark has to be unique and original. Registering a trade mark gives you monopoly over its use in relation to specific goods and services. If an identical or similar trade mark exists, it is possible that you may have difficulty in registering it. To find out if your trade mark is available you can conduct a trade mark search in the relevant countries register.
  3. Research and understand the classes you will have to file your trade mark under. Trade mark are registered under classes, which identify specific goods and services. You can learn more about trade mark classes in our post here.
  4. Once you have gone through the above, you should file the trade mark application with the appropriate organisation. Trade marks are territorial so they need to be filed with the relevant countries trade mark offices.

The trade mark process is more complex than incorporating a company. The process can take a few months to complete. In the UK, the trade mark process can last between 4 to 6 months. If you are not comfortable with going through the process yourself, we can help you register your trade mark through one of the three affordable packages that we offer.

If you haven’t yet started your company then registering your brand would be both incorporating your company and getting your trade mark registered. If you have a company, then it would be registering your trade mark.

Learning from Apple’s trade mark issues in China

Apple's trademark issues with 'iPhone' in China

Apple Inc, the tech giant, recently lost a court battle over the use of the word ‘iPhone’ on leather goods in China. A local company called Xintong Tiandi will continue to have the legal right to use ‘iPhone’ on leather goods. As expected, Apple wasn’t happy with the decision and will be requesting a retrial in the Supreme People’s Court. As this trade mark battle continues, what lessons can be learned from this episode?

The trade mark system in China

The Chinese trade mark system is considered to be complex and murky. Trade marks can be filed on a ‘first to file’ basis instead of ‘first to use’ basis. What this means is that any company that files a trade mark first has an opportunity to obtain the registration. A trade mark search in the Chinese Trade Mark Office website shows 247 different results for ‘iPhone’ under different trade mark classes. Most of these are from local companies.

‘iPhone’ trade mark history in China

Apple filed a trade mark application for the word ‘iPhone’ in 2002, but only for computer hardware and software. The registration was granted in 2013. Xintong Tiandi had filed for its ‘iPhone’ trade mark in 2007 when the iPhone went on sale globally. The court decided that trade mark wasn’t popular and synonymous with Apple in China until 2009 when it was introduced in the country. Based on this, they lost the case.

Learning from Apple’s trade mark issues

Apple previously had an issue with their trade mark ‘iPad’, which they bought from the wrong company. It is common to find ‘trade mark trolls’ in China. Companies looking to expand into China might find that their trade mark is already registered. The most effective method of overcoming this issues is to file your trade mark as soon as possible. Had Apple filed ‘iPhone’ under multiple classes it would not have been in the situation it is in today.

Apple will continue to pursue this case because of its financial strength and a strong case, but most small to medium sized businesses would not be in the position to do so. As stated, the best advice is to protect your brand as soon as you create it.