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How to deal with a trade mark infringement threat

Dealing with a trade mark infrongement

Building a brand takes a lot of work.  After all the effort and hard labour you’ve put into creating your distinctive brand, it’s not pleasant to find out someone is using or manipulating the materials you’ve created. If you’ve registered a trade mark and someone is using it, or a deceptively similar mark, without your authorisation then they could be infringing upon your trade mark.

Identifying trade mark infringement

If you think that someone is using your trade mark in a way that is likely to confuse, deceive or mislead customers then you can start a trade mark infringement threat against them. To claim trade mark infringement, you have to prove the following:

  • that you have a valid trade mark registration that is legitimate and should be protected;
  • that a third party is infringing it and using it in trade;
  • and that the third party does not have consent to use the mark;

As these cases can be complicated, it is essential that you consult with a trade mark attorney before proceeding.

Using a Cease and Desist letter

If you do have a valid mark that ought to be protected, then the first port-of-call is normally to send carefully worded Cease and Desist letter (also known as a Letter of Claim or a Letter Before Action). This letter is designed to open communication and bring about an amicable settlement without the need for legal action.

The letter notifies the infringing party that you have a registered trade mark and insists that the third parties use of the trade mark stops. Alongside this letter, you can send a legally binding undertaking – a type of legal promise- which outlines the obligations of the third party not to commit any further infringing acts.

Unjustified trade mark infringement threats

If you have your solicitor send a Cease and Desist letter or Letter of Claim it must be very carefully worded so as to avoid unjustified threats of trade mark infringement. In the UK, if you file a trade mark infringement threat against a third party, but it is found to be wrongly alleged then you could be liable for making an ‘unjustified threat’.

In short, if you file for trade mark infringement against someone who turns out not to have infringed your trade mark you could make yourself liable! Any ‘aggrieved person’ could bring action against you for making a threat with no grounds. ‘Aggrieved person’ is a large and vague category, covering not only the person to whom the threat was given but anyone whose commercial interests might be affected. This could expand to include manufacturers or distributors. This particular piece of legislation is unique to the UK, and may change soon as the Unjustified Threats Bills is currently before Parliament, as of April 2016.

Lack of cooperation from trade mark infringer

If you’ve sent Letters of Claim, the party is continuing to infringe your trade mark and there is sufficient evidence of a breach then you can make a claim in the Chancery Division of the High Court (the Court of Session in Scotland), or the Intellectual Property and Enterprise Court (IPEC). An injunction can be obtained from either court to prevent the repetition of trade mark infringement.

Remedies for infringement of trade marks

Apart from a court injunction, there are a number of other remedies available. These include an inquiry into the damages caused or profits made by the trade mark infringer. Better known brands can order forcing the defendant to publicise the judgement through a publicity order. This is only necessary if there is a need for a supplementary deterrent and/or to contribute to public awareness about the infringement.

Court proceedings will ensure the infringer will cease trading and may have to pay compensation for damages if applicable. It is still possible (and indeed, often advisable) to reach a settlement before going to court.

Simplified Steps to Claiming Trade Mark Infringement

(Remember that settlement can occur at any point in these steps.)

  1. Identify the offending mark and check it is infringing your mark
  2. Check that your mark is valid and ought to be protected
  3. Send a Cease and Desist Letter
  4. Send a legally binding undertaking (optional)
  5. Issue a claim form to start civil proceedings (if no settlement is reached)
  6. Approach Trading Standards Officers (applies to criminal proceedings only for e.g. counterfeit products)
  7. Attend court and reach settlement
  8. If necessary, appeal against the court’s decision.

What to do if you’ve been issued with an infringement notice

If you’ve been served an infringement notice, arguing that your trade mark violates another party’s then you should contact a trade mark attorney immediately. You should check to ascertain whether your trade mark is in violation of anothers or not, and check the validities and expirations of all marks. If you have made a mistake, then it is best to come to an amicable agreement by liaising with the other party through your attorney.

Trade mark infringement on Google Adwords

Trademark infringement on Google Adwords

Does the use of a trade mark in Google Adwords considered to be an infringement? What about the use of trade marks as keywords to trigger an ad on Adwords?

Early last year, Samsung gained some positive coverage within the marketing industry for running the ad shown below.

Samsung ad on iPhone trademark in Adwords

Terminology

Keyword – A keyword in online advertising is a word or phrase which can be used by an advertiser to target their products or services to an audience. When a search engine user types in a keyword, they will see ads from advertisers who have selected the keyword to display their ads.

The ad was shown to users searching for the then new ‘iPhone 6s’. The ad cleverly omitted the use of the word ‘iPhone 6s’ while being creative enough to mention their own new phone model. The use of registered trade mark as keywords for advertising is one issue which has been taken to court by Interflora against M&S.

Use of registered trade marks as keywords for ads

Google Adwords and other similar tools allow users to select keywords, which they can bid upon to display their adverts. This is a common and popular method of advertising on search engines like Google. The Samsung example above displays an Adwords ad.

In the case brought to the court by Interflora, the company claimed that M&S was using its trade mark to advertise their flower service. They sued M&S for trade mark infringement. The High Court found that the advertisements led users to believe that the M&S flower service was part of Interflora. M&S took the case to the Court of Appeal on various grounds, one of them being wrongful burden of proof on the defendant to prove their ad made a clear distinction between  M&S and Interflora.

Read more about the Interflora v M&S case.

The Court of Appeal overturned the judgement of the High Court. They came to the conclusion that the there was nothing objectionably wrong with keyword based advertising. The argument put forward was that in such scenarios, trade mark rights should not prevent fair competition.

This case sets a good precedent for the use of keywords to advertise on. Based on this case, the onus is upon on the claimant to prove that their trade mark was infringed.

The use of registered trade marks as keywords for advertising is commonly practised today. The European Court of Justice (ECJ) had set the following principle after the Interflora v M&S case:

Offering a keyword which is similar or identical to a registered trade mark is not ‘use’ of the trade mark in the course of trade (arts 5(1) and (2) of the TM Directive 1989 (repealed and superseded by TM Directive 2008) (Google France)

However, one the preceding principles also state that:

The owner of a trade mark with a reputation (TM Directive 1989, art 5(2) repealed and superseded by the TM Directive 2008) can prevent a competitor from advertising using a keyword which corresponds to the trade mark where without ‘due cause’ it takes unfair advantage of, or is detrimental to, the mark’s distinctive character or repute.

Google Adwords has an updated policy which reflects the rules by the ECJ. They do provide a complaint form for matters where the trade mark owner is unhappy with the use of their trade mark in Adwords.

Use of registered trade marks as keywords in ads

In terms of using a trade mark within the ad text,  if they are used, Google can investigate and restrict the use of trade mark with in ad. However, there are exceptions for Australia, New Zealand, the United States, Canada, the United Kingdom or Ireland. In these countries, trade marks can be used in ad text in the following cases:

  • Reseller and information websites – A trade mark can be used by a reseller if the product or its component are the primary product or service being sold on the landing page. There has to be a method of purchasing the product or service or display commercial information about it. Information pages should also have a landing page focused on the trade marked goods or services with informative details about it.
  • Authorised use – A trade mark can be used in ads provided the trade mark owner has authorised its use. The process involves obtaining permission from the owner using Google’s own authorisation form,

We have had enquiries where a business owner has requested assistance on what to do if their company name or trade mark is being used on Adwords. This blog post should clear up a number of issues surrounding the use of trade marks on Adwords and other similar advertising tools. Be cautious if you are planning on using trade marked keywords, If you have an issue with a trade mark, then it would be best to consult a professional.  All cases are different so for further advice, please contact us and we will help you over this matter.