Trademark Dispute: Taking Action Against Infringement

What is a trademark?

A trademark is a symbol, word, or phrase used to distinguish a particular product or service from others in the marketplace. Trademarks are intellectual property and are protected under the Trade Marks Act 1994. They can be registered with the Intellectual Property Office (IPO).

Trademarks are an essential tool for protecting your brand. By registering a trademark, the owner gains exclusive rights to use that trademark in connection with their services or goods for sale. They can take legal action against others who use the same or similar mark in a way that increases likelihood of confusion among consumers.

Registered trade marks can be made up of any combination of letters, numbers, symbols, or designs. They can also be sounds, scents, or even shapes. The key requirement is that they must be distinctive and not likely to be confused with other trademarks already in use.

Trademark protection typically lasts for 10 years. After this period, it can be renewed indefinitely as long as the trademark remains in use and is not challenged by others.

Trademark infringement

Trademark infringement occurs when someone uses a trademark without permission from the owner of the trademark in a way that is likely to cause confusion or deception among consumers.

Trademark infringement includes using a confusingly similar or identical mark on similar goods or services. It can also include using a mark in a way that dilutes the value of the original mark, or using a mark that is so similar to an existing mark that it causes confusion among consumers during the course of trade.

It can also include an unauthorised third party using an identical or similar trade mark on goods or services that are not similar, causing damage or taking an unfair advantage of another trademark’s reputation.

Trademark infringement can happen both intentionally and unintentionally. For example, a company might intentionally use a trademark that is identical or similar to a well-known brand in an attempt to mislead consumers and benefit from the brand’s reputation.

On the other hand, a business owner might accidentally infringe a trademark if they unknowingly use a similar mark to an existing one.

Trademark owners can take legal action against infringers, seeking injunctive relief and permanent injunctions to prevent further use of the infringing mark, damages for any losses they have suffered, and the profits made by the infringer through the use of the mark. The remedies available will depend on the circumstances of the case and the extent of the infringement.

To find out more about trademark disputes and taking infringement action, contact us today to speak to a solicitor on our panel.

Making a trademark infringement claim

To make a trademark infringement claim under common law, the first step is to gather evidence that shows the infringing mark is causing confusion or deception among consumers. This could include examples of the infringing use of the mark, such as advertisements, packaging, infringing goods, or websites.

Once you have evidence, the next step is to send a cease and desist letter to the infringing party, requesting that they stop using the infringing mark. In the letter, you should outline your trademark rights and provide evidence of the infringement. You may also want to include a proposed resolution, such as a licensing agreement or a demand for damages.

If the infringing party does not comply with your cease and desist letter, you may need to take legal action. This could involve initiating trademark infringement proceedings in court or initiating an arbitration or mediation process. In the legal action, you will need to prove that you own the trademark, that the infringing party is using a confusingly similar mark, and that the use of the infringing mark is likely to cause confusion or deception among consumers.

It is recommended that you seek the advice of a trademark dispute resolution solicitor to guide you through the process of making a trademark infringement claim and court proceedings.

A trademark solicitor can help you assess the strength of your claim, determine the best course of action, and represent you in any legal proceedings, they will also provide advice on the legal costs involved.

Defences to a trademark infringement

There are several statutory defences that can be raised in a trademark dispute, depending on the circumstances of the case. Here are some of the most common defences:

Fair Use:

This defence applies when a third party uses a trademarked term for a descriptive purpose, such as to describe the qualities or characteristics of a product or service. For example, a company may use the trademarked term “Kleenex” to describe a tissue product, without implying any affiliation with the Kleenex brand.

Prior Use:

This defence applies when a third party can prove that they were using a trademarked term before the trademark owner registered their mark. If the third party can demonstrate that they have prior rights to the mark, they may be able to continue using it.

Genericness:

This defence applies when a trademarked term has become so widely used to describe a particular type of product or service that it is no longer associated with any particular brand. For example, the term “escalator” was once a trademarked term, but it has since become a generic term for moving staircases.

Consent:

This defence applies when the trademark owner has given consent for a third party to use their trademarked term. For example, a licensing agreement may allow a company to use a trademarked term in exchange for a fee or other consideration.

Non-Infringement:

This defence applies when the third party can demonstrate that their use of the trademarked term does not create confusion or deception among consumers. For example, a company may use a similar mark, but in a different industry or with a different product.

It’s important to note that the availability and success of these defences will depend on the specific facts and circumstances of each case. It’s always best to consult with a trademark attorney to determine the best strategy for your situation.

How can a trademark dispute solicitor from our panel assist?

A trademark dispute solicitor from our panel can provide a range of services to help you protect your trademark rights and resolve trademark disputes. Below are some ways in which a trademark dispute solicitor can help:

• Advising on trademark registration: A trademark dispute solicitor can advise you on the process of registering a trademark, including assessing the strength of your trademark and identifying potential conflicts with existing marks.
• Enforcing your trademark rights: If you believe your trademark rights have been infringed, a solicitor can help you enforce those rights by sending cease and desist letters, filing lawsuits or initiating arbitration or mediation proceedings.
• Defending against trademark infringement claims: If you are facing a trademark infringement claim, a solicitor can help you develop a defence strategy and represent you in any legal proceedings.
• Negotiating settlements: A solicitor can help you negotiate settlements with the other party, which may include licensing agreements, monetary compensation, or other forms of resolution.
• Providing legal advice: A solicitor can provide legal advice on any aspect of trademark law, including registration, enforcement, and disputes.

Overall, a trademark dispute solicitor can help you navigate the complex and often confusing world of trademark law, ensuring that your trademark rights are protected and that any disputes are resolved efficiently and effectively.

Our solicitors also help with commercial claims, such as breach of contract and CCJ removal

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