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.)
- Identify the offending mark and check it is infringing your mark
- Check that your mark is valid and ought to be protected
- Send a Cease and Desist Letter
- Send a legally binding undertaking (optional)
- Issue a claim form to start civil proceedings (if no settlement is reached)
- Approach Trading Standards Officers (applies to criminal proceedings only for e.g. counterfeit products)
- Attend court and reach settlement
- 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.