A registered trade mark gives you a monopoly right to use your mark for the goods and services that you have registered the trade mark for. Your brand is important to your company as this will be the name that people recognise you by, and the name under which you build your reputation.
That is why if you notice someone is using your trade mark it is important to take action against them for trade mark infringement, to ensure that your trade mark is protected and that your brand image and reputation is not diluted.
Trade Mark Infringement
Trade mark infringement takes place when a person uses:
A) an identical mark to your trade mark for identical goods and/or services
B) a similar mark to your registered trade mark for identical or similar goods and/or services, and there is a likelihood of confusion between members of the public about which company those goods and services come from
C) an identical or similar mark to your trade mark, where you have built up a reputation in the UK, and that use of an identical or similar mark takes unfair advantage of your trade mark.
It is important to make sure that you take robust action against any trade mark infringement. If you do not enforce your trade marks, your mark could lose distinctiveness, the brand could be diluted, or it could encourage others to infringe on your trade mark and take advantage of any reputation you have built up in your brand over the years.
So, what do I do if someone is using my trade mark?
The first step is to gather as much information about how your trade mark is being used, who is using it, and ensure that you save all the evidence you find (eg taking screenshots (ideally with dates) of social media and websites). This is particularly important to secure early on, just in case the person infringing your mark decides to remove any materials from the internet.
Before contacting the person using your trade mark, we would recommend instructing a solicitor to review your evidence and send a cease and desist letter (also known as a letter of claim) to the person using your mark on your behalf.
Cease and desist letters start the dispute process, by informing the party using your mark how they are infringing, and setting out what you want in order to resolve the issue (eg for them to stop using your mark, and to make a payment to you for their use of the mark to date). The hope is that a cease and desist letter can help come to an amicable resolution without having to resort to issue court proceedings, but where that is not possible, lawyers can then guide you through the court proceedings.
Having solicitors on board is important, as they will be able to guide you through the legal bases you can rely on in your claim, advising whether you have a claim, how to proceed, and ensuring that you are not making any comments that could be detrimental to your position, or making any comments that could be seen as unjustified threats of trade mark infringement – a common pitfall when it comes to trade mark infringement cases which can result in a claim for damages being raised against you.
If someone is using your trade mark, please get in touch with us. We offer a free initial consultation, where we discuss your trade mark, steer you in the right direction and let you know how we can help with your particular case.
Written by Chloé Vertigen – Solicitor
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