Registering a trade mark allows you to protect one of the most valuable intellectual property assets your business has, whether that’s your brand name, logo, tagline, colours, packaging, or something else.
And thanks to the goodwill and reputation associated with your brand, after years of hard work, your logo, name and other forms of IP can act as the guarantee of quality customers look out for when making decisions.
So it goes without saying just how damaging trade mark infringements can be, undoing all of that hard work and good reputation in a fraction of the time it took to build it up and diverting sales away from your business. That’s why you should act quickly and decisively when you notice someone infringing your trade mark.
Brand protection can be tackled in a number of different ways, which vary depending on the needs of your business.
For example, a “real world” infringement (with a third party actively using your brand name to sell goods/services) requires an urgent cease and desist letter, possibly leading to court proceedings. Alternatively, you could be facing a dilution of your valuable monopoly with a competitor applying for a similar brand name as a trade mark. In which case, only an effective trade mark opposition will stop the application from becoming a registration.
Sometimes simply reaching out and communicating your position in a straightforward and authoritative manner can yield a positive outcome, you may even be able to come to a profitable agreement involving licensing. But if communication proves unsuccessful, or if you need help with the wording, seeking professional legal support from a specialist trademark infringement lawyer will be essential to counter the infringement and claim compensation.
“We recently had an infringement on our trademark in Turkey and needed some urgent action. Briffa acted incredibly efficiently and effectively at filing an appeal against the infringement. Having done some work with Briffa in the past they continue to prove to be a great firm to work with.”
– Taylor Morris, Trade Mark Services Client
Our expert solicitors specialise in protecting British brands from trade mark infringement.
Domestic trade mark oppositions are dealt with by the UK Intellectual Property Office (UKIPO), with a process that involves the filing of legal submissions and evidence.
Most oppositions are resolved between the parties before a judgment is made, but if no settlement is reached, the UKIPO will decide on the merits of the opposition and award fixed costs in favour of the successful party.
We have years of experience handling the court proceedings involved in a trade mark dispute.
When dealing with trade mark infringement, affected parties can file claims with the UK courts. Two different courts will hear and review IP infringement cases – the Intellectual Property Enterprise Court (IPEC) and the High Court. The applicable court will depend on the complexity of the case and the damages involved.
For advice on what path may be suitable for your brand, please get in touch.
Without the proper legal advice, a dispute over an infringement is rarely straightforward, and when the dispute crosses international borders, the process can become even more complicated.
One consideration is that trade marks are only valid for the territory in which they’re registered, meaning that trade marks filed with the UK Intellectual Property Office (UKIPO) are only valid in the UK. However, other trade marks are still available to UK businesses. We can file EU trade marks (covering all 27 EU Member States) or International Trade Marks, either through a central registry called the World Intellectual Property Office (WIPO) or directly in different jurisdictions.
Nonetheless, suppose you suspect that a third party is infringing your trade mark in another country, or you would like to ensure you’re well protected against infringement internationally. In that case, our highly experienced team and network of international agents can help.
Our trade mark infringement lawyers have protected British brands all across the world since 1995
We offer a free consultation to discuss your trade mark infringement needs before any fixed fee quotes are given
We have offices in the UK and the Republic of Ireland
We offer an industry leading service with short turnaround times and business-focused advice
Under the Trade Marks Act 1994, an infringement occurs typically when a party uses branding (e.g. names, logos, colours) that is the same or similar to an earlier trade mark. In particular, with goods/services that are the same or similar to the goods/service protected by that earlier trade mark.
Furthermore, trade marks with a significant reputation are protected from copying regardless of the goods or services that the third party is selling. The idea is that certain brands are so huge, any form of replication will be an infringement.
If you notice an infringement of your trade mark then record as much evidence as possible. With the help of a legal advisor, you may then want to contact the other party and discuss the infringement, attempting to resolve the issue without the need for legal proceedings. If court proceedings are necessary, it will be beneficial to prove attempts were made to settle the situation earlier.
Fortunately, Briffa has both an office in the EU, and a network of associates worldwide, which allows us to protect our client’s rights wherever the infringement occurs. We can oversee the process, direct the strategy and ensure that the costs are kept to a minimum.
We’ll start with a no obligation chat where we’ll get to know you and understand your current challenges.
Book your free consultation now