A trade mark is a registered right which protects a sign and distinguishes the goods and services of one undertaking from those of another. Essentially, a trade mark acts as a ‘guarantee of origin’ in relation to the goods and/or services for which it is registered. Words, logos and slogans are common trade marks. But in recent years the scope for trade mark registration has expanded and now colours, 3D objects, sounds and smells can be registered.
Trade marks are territorial, which means that they need to be registered in every country where you want to use them. Also, when applying to register a trade mark, it needs to be registered in respect of goods and services. There are 45 classes covering various goods and services.
The owner of a trade mark has the exclusive right to the use of the trade mark. As such, trade mark infringement occurs when someone uses a registered trade mark without the consent of the owner, by doing any of the following, in the course of trade:
The following acts constitute trade mark infringement:
If trade mark infringement is established before a Court, the trade mark owner is entitled to the following remedies from the infringer:
Further, there are criminal offences for unauthorised use of trade marks in relation to goods leading to imprisonment or a fine.
Naturally, the registered owner of the trade mark can bring a claim for trade mark infringement. Licensees of a trade mark can also claim subject to certain conditions.
If you discover someone using your registered trade mark there are a number of things you can do straight away. Firstly, try and ascertain the identity of the infringer as soon as possible (i.e. looking at the alleged infringer’s website). Secondly, collect evidence of the infringement i.e. by taking screenshots of the website and making a test purchase. It is wise to build as much evidence early on, so you have proof to include in a potential legal claim.
Once you have secured evidence, instructing solicitors to draft a letter of claim (commonly known as a cease & desist letter) to send to the infringer will get the ball rolling. Instructing solicitors will also ensure your letter is properly drafted, and that it is not a groundless threat. The purpose of the letter of claim is to set out the intellectual property rights you rely on, notify them that they are infringing said rights, and tells them to stop infringing. The hope at this stage is that an amicable solution can be reached between both sides.
Attack is the best form of defence if you are subject to a trade mark infringement claim, such as by bringing a counterclaim for invalidity or revocation – that is, the trade mark relied on is invalid, for example, because it is descriptive or non-distinctive, or should be revoked on the basis of non-use.
You can also argue that the trade mark owner has not established all the grounds for trade mark infringement. There is also the possibility of offering to rebrand.
Seeking legal advice early on, especially if you have received a letter of claim, is advisable as your lawyers will be able to advise on which defence best applies.
Trade mark clearance searches should be carried out to ensure that the name you are planning on using does not infringe a trade mark.
When undertaking searches prior to deciding on a name for a business/trade mark, keep a record of all searches. This includes evidence of any brand development process.
Trade mark infringements can be complex cases, for both sides of the court. Often, it is better to negotiate, come to an agreement, and settle early – thus avoiding a costly, public court case. Of course, sometimes this cannot be avoided. But regardless of whether you want to settle or fight your case in court, you’ll need specialist advice from a solicitor. Our trade mark team offers free initial consultation, followed up by fixed-fee quotes. Please get in touch today if you need help.
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