If you’ve read our guide to registering a trade mark, or our introductory guide to intellectual property, you’ll know that trade marks protect intellectual property such as logos, brand names, and slogans from being used without the owner’s permission. You’ll also know that the best way to protect a trade mark from being used without permission is to register it.
In general, when someone uses trade-marked content without permission, this is known as trade mark infringement. The usual forms of infringement are quite straightforward and tend to involve someone else using an identical or confusingly similar logo, slogan or word mark to yours.
Our guide here focuses on just that scenario. It highlights your options for preventing further infringement from occurring, and perhaps even for obtaining compensation from the infringer, if the infringement has caused harm to your business.
How can trademark ownership be proven?
The first step to taking any enforcement action is to ensure that you’re in a strong position yourself. That means looking at the robustness of your claim to exclusive ownership and usage of your trade mark.
If your trade mark is already registered, then proving your ownership and the exclusive rights over the usage of that trade mark can be straightforward: there will be a digital, publicly viewable record of your registration on the website of the Intellectual Property Office, you can point anyone you like at this record.
You will have received an official trade mark certificate also, at the time of registration. It’s a good idea to keep these in a safe place.
You’ll also need to double check that your trade mark registration is still valid.
It can be trickier where the infringement takes place somewhere else, beyond the boundaries of any national registered protection you have in place. This is a challenge faced by many brands who have registered their trade marks in their home country, only to later discover that unscrupulous copycats have essential free-ridden on all their efforts and success and misappropriated their marks for use in another country.
In this scenario, we recommend getting a advice from an expert. There are certainly options that you can consider, but they may differ significantly from one type of business to the next and it’s advisable to get an expert steer on what’s going to be most successful and budget-friendly in all the circumstances.
If you don’t already have a trade mark registration, but your application for registration is underway, you may still be able to take action against the infringer. If the infringer has not already opposed your application (they have the opportunity to do so as part of the application process – see our guide to registering a trade mark), you may find that your communication sparks that opposition. That’s not necessarily a bad outcome. The process may in fact help to clarify the ownership position whether in fact it would be appropriate for one business to have exclusivity over the trade mark.
Or, assuming you’re not suffering any significant damage because of the infringement, you might be inclined to stay below the radar and to wait the maximum few months for your registration hopefully to conclude; only then communicating with the infringer. Again, advice from a legal expert will be able rapidly to identify the best course of action for your particular circumstances. Even having gained the registration won’t guarantee you an easy win with an infringer.
The hardest scenario is where your trade mark is unregistered. In our guide to registering a trade mark, we touch on the challenges of protecting an unregistered trade mark and the far less satisfactory options available for handling trade mark infringements, for example, under the law of passing off.
Being eligible for this type of protection and proving an exclusive right to an unregistered trade mark is far from assured and it is particularly challenging for startups and SMEs. This is because you will need to prove that:
1. your market reputation is already of a high enough level for the public to recognise your identity and automatically assume the other copycat trader is you, and
2. the other trader’s deception to the public has caused you a loss of business (or other relevant damage, such as reputation loss) as a result.
Gather your evidence
The clearer the evidence of the infringement the better. If you have used the ® and/or ™ symbols with your own trade marks, this will always help an argument that it would have been patently obvious to the infringer that they were acting deliberately unlawfully.
As far as you can, you should also include evidence of how the infringement has caused your business damage, such as sales lost because customers were confused and thought the infringer was your business, for example.
What are the options for trademark enforcement?
Once you have your proof of ownership and infringement, there are a few main routes of enforcement:
• A cease and desist letter: This is a note that you, as the trade mark owner, can write to inform the infringer that they’re breaching trade mark law and that they must stop the infringement immediately.
Initially, the you may choose to send this communication directly. We have a template first communication (coming soon) that you can easily configure for exactly these purposes. You’ll also find a more demanding follow-on version of this communication, threatening legal action unless the infringement is ceased, on Farillio.
And if the infringer still doesn’t respond to your satisfaction to either of these communications, Farillio’s expert legal partners can send a lawyer’s letter to the infringer on your behalf, emphasising that legal enforcement steps will be or have now been taken and requesting cooperation before matters go any further. It is worth getting a quick view on your prospects of success from a legal expert at this stage, especially if the infringer is proving tricky to find, unresponsive and/or based outside the UK.
Be aware that any allegation of infringement has to be legitimate as there is a risk that there may be a counterclaim of groundless threats against you.
1. Take down notices/requests of third party hosts of infringing content: You can contact marketplaces using the online forms on websites such as eBay, Facebook, Amazon and explain that use is an infringement of your registered rights.
2. Mediation: This is an out-of-court solution where the trade mark owner and infringer can reach a mutually beneficial solution with the help of a third party. You do, however, need the cooperation of the infringing party to attend any such mediation session, so mediation is not an option for everyone.
3. Court proceedings (legal advice is highly advised for this route): Instigating legal formal legal action can, for example, prevent further use of the trade marks by the infringer, provide you, as the trade mark owner with compensation for any damage caused, and/or instruct the infringer to destroy or hand over any products or materials using the infringing mark.
4. Taking action abroad: this is complicated as it depends on your rights, the rights of the alleged infringer, how long there has been use, territory, and the legal mechanisms open to you. It’s always a good idea to document your use and the alleged infringers use abroad and then discuss with an expert.
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