Trade Mark Infringement- Protect Your IP

What is a trade mark?

A trade mark is a unique symbol, word, or phrase used to distinguish a product or service from others in the marketplace. It acts as a brand identifier, helping consumers recognise and associate specific goods or services with a particular company.

Trademark registration and protection

The Trade Marks Act 1994 governs the registration and protection of trademarks. It allows businesses to register and protect their brand identities, preventing others from using similar or identical marks without their permission.

You should register a trade mark with the Intellectual Property Office (IPO) in England and Wales.

Registering with the IPO will allow the owner of a trademark to gain exclusive rights to use that mark in connection with the specified goods or services offered. This legal protection safeguards the brand from unauthorised use by others.

Trade mark Infringement

Trade mark infringement occurs when someone uses a trademark in a way that violates the exclusive rights of the trademark owner. This unauthorised use can lead to confusion among consumers and potentially harm the reputation of the legitimate trademark owner.

Common types of trade mark infringement include:

Similar or identical marks:

Using a mark that is identical or very similar to a registered trademark can confuse consumers or take unfair advantage of the original trade mark.

Likelihood of confusion:

If the use of a similar mark is likely to mislead consumers about the source of goods or services, it may constitute infringement, especially if it is likely to be detrimental to the distinctive character of the original mark.

Dilution:

Even if there is no likelihood of confusion, using a similar or identical mark for unrelated goods or services in the course of trade might dilute the distinctiveness or reputation of the original trademark.

Counterfeiting:

Creating and selling fake or counterfeit products using a registered trademark is a clear form of infringement.

Passing Off:

Misrepresenting goods or services in a way that is likely to cause confusion or deception, often by implying a connection to a well-known brand.

Protecting your trademark

If you believe your trademark is being infringed upon, taking appropriate legal action is essential to protect your rights. Some of the general steps you might consider include:

Gather Evidence:

Collect evidence of the infringing activity, such as examples of the unauthorized use of your trademark.

Consult a Solicitor:

Seek advice from an intellectual property solicitor who specialises in trademark law. They can assess your case and provide tailored guidance on trademark infringement proceedings.

Cease and desist letter:

Your solicitor may send a letter demanding that the infringer stop using your trademark. Quite often, receiving a cease and desist letter can be enough to stop someone from using an infringing mark.

Negotiation or settlement: In some cases, a negotiated settlement can be reached outside of court. A potential drawback of asserting trademark infringement is the risk of facing a claim for groundless threats. To avoid this, a “Letter Before Action” should be carefully drafted to comply with legal exceptions for such claims. It is crucial to be specific about the infringing activity to prevent overly broad allegations.

Legal Action:

If negotiations fail, you may need to initiate legal proceedings by making a trade mark infringement claim to protect your rights.

Remedies for Trademark Infringement

If a trademark owner successfully proves infringement, they may be entitled to various remedies. These can include:

Injunctions

• Interim Injunction: A temporary court order prohibiting the infringer from continuing their actions until the case is resolved.
• Permanent Injunction: A final court order preventing the infringer from using the trademark in the future.

Damages or account of profits

• Damages: Monetary compensation for the losses suffered by the trademark owner due to the infringement.
• Account of Profits: Requiring the infringer to account for and pay over any profits they made from the infringing activity.

Delivery up and destruction of infringing goods

• Delivery Up: An order requiring the infringer to surrender any infringing goods or materials.
• Destruction: An order for the destruction of infringing goods or materials.

Erasure or removal of infringing signs

• Removal: An order requiring the infringer to remove any infringing signs or markings from their products, packaging, or advertising.

Costs

• Legal Costs: The infringer may be ordered to pay the trademark owner’s legal costs.

Criminal penalties

In certain cases, trademark infringement can be a criminal offense. If found guilty, the infringer may face fines or imprisonment.

Consulting with a legal professional can provide tailored advice and help you understand your options.

Why Choose Expert Commercial Law?

Our panel of expert trademark infringement solicitors can assist both trademark owners and alleged infringers. With years of experience and a deep understanding of trademark law, our solicitors can provide effective representation in a range of cases.

All of the law firms and specialist trade mark infringement lawyers on our panel have the experience and expertise required to take on your case. Each solicitor is vetted before being allowed onto our panel, and we only select the best in the business. All of our solicitor firms are authorised and regulated by the Solicitors Regulation Authority (SRA).

Alongside the trade mark infringement services our solicitors can offer, they can also help with commercial claims, such as breach of contract, partnership disputes, fraud claims, restrictive covenants and CCJ removal.

Please note we are not a firm of solicitors; however, we maintain a panel of trusted and regulated legal experts. If you contact us in relation to an injunction query or a commercial law case, we will pass your case on to a panel firm in return for a fee from our panel firms. We will never charge you for passing your case to a panel firm.

Contact us today to discuss your specific situation and explore your options for protecting your trademark.