Businesses spend considerable resources on building well-known, reputable brands to set them apart from their competitors. Well-advised businesses protect the key elements of their branding as trade marks, alerting third parties to the business’s monopoly over its use in connection with the relevant goods or services. If someone else uses the branding, they may be liable for trade mark infringement.
Trade mark infringement can have catastrophic consequences if left unchecked. It can confuse consumers into believing the third party’s goods come from your business, diverting custom away from you. It can dilute your brand, which affects your position in the market and makes it difficult to attract investors. Crucially, it poses a significant threat to the reputation you have worked so hard to develop. In extreme cases, extensive brand impersonation and trade mark infringement can lead to a business’s demise.
Here, our trade mark solicitors explain how trade mark owners can identify and enforce your trade mark rights to ensure the protection of their brand’s goodwill, reputation and identity.
Contents:
- What is a trade mark?
- Importance of protecting your trade marks
- What is trade mark infringement?
- What constitutes trade mark infringement?
- Examples of trade mark infringement
- How do you identify trademark infringement?
- What should I do if I suspect trade mark infringement?
- Options to tackle trade mark infringement
- Unregistered trade marks
- What if the infringer is based in another country?
- Trade mark infringement remedies
- Time limits for trade mark infringement claims
- Maintaining and renewing your trademark
- Summary
What is a trade mark?
A trade mark is often referred to as a ‘badge of origin’ because it informs consumers where specific goods or services originate from. For example, when we buy a can of Coca-Cola, we trust that the drink was manufactured by The Coca-Cola Company because the can bears its trade marks. We might choose that particular can over other, similar, drinks on the basis that we believe we know what we are getting and trust that it will be of a certain quality.
Trade marks are powerful rights. They provide a monopoly over the marks in connection with the goods and services they are registered for. The longevity of a trade mark is unparalleled by any other intellectual property right. Provided the mark is renewed every ten years, it lasts indefinitely. Trade marks registered in the 1800’s are still in force today.
Importance of protecting your trade marks
All experienced intellectual property solicitors, like ours, will stress the importance of registering key aspects of your branding as trade marks. Once registered, you must protect your trade marks against unauthorised third- party use.
Effective trade mark protection has several key benefits, including the following:
- Trade mark protection safeguards your investment
Businesses spend vast sums on brand development, and for good reason, as the rewards can be extraordinary. Apple’s brand value in 2023, for example, was estimated to be in excess of $880 billion. Building, maintaining, and enforcing a comprehensive portfolio of trade marks plays a crucial role in protecting your brand development investment.
- Trade mark protection avoids brand dilution and confusion in the marketplace
A trade mark’s primary function is to denote the origin of goods or services. Once registered, you must proactively enforce your trade mark against impersonators. If you don’t, your profitability and reputation may suffer if consumers buy the impersonator’s goods, believing them to be yours. Worse still, you risk the market being flooded with copy-cats, causing brand dilution and threatening the goodwill you have nurtured.
- Trade mark protection helps you avoid trade mark revocation
To qualify for registration, a trade mark must distinguish its owner’s goods or services from those of other businesses. If it does not, the trade mark will be refused registration or, if already registered, may be revoked.
Sometimes, a brand can become the victim of its own success. If a trade mark’s popularity is such that it becomes the generic term for the owner’s goods or services, it is vulnerable to revocation. This concept is referred to as the somewhat sinister sounding ‘genericide’. Examples of trade marks that have fallen foul of genericide include Hoover, Frisbee and Escalator.
To avoid genericide, you must monitor the use of your trade mark from the outset since, once a mark has become generic, it is too late. If you become aware of your trade mark being misused, speak to our intellectual property solicitors. They will devise a strategy that strikes a balance between protecting your trade marks and maintaining your relationship with consumers.
What is trade mark infringement?
A registered trade mark is infringed when an unauthorised third party uses an identical or similar mark in relation to goods or services that are identical or similar to those covered by the registration.
What constitutes trade mark infringement?
The following actions may give rise to trade mark infringement, if the wrongdoer was acting in the course of their business:
- Using a mark identical to a registered trade mark in relation to goods or services identical to those for which the trade mark is registered.
- Using a mark identical to a registered trade mark in relation to goods or services similar to those for which the trade mark is registered, or a mark similar to a registered trade mark in relation to goods or services identical to those for which the trade mark is registered, where the use creates a risk of consumer confusion.
- Using a mark identical or similar to the registered trade mark in relation to goods or services that are not similar to those for which it is registered, if such use damages the trade mark or takes unfair advantage of its reputation.
An example of a trade mark that successfully invoked this provision is Claridge’s, which successfully prevented a third party from using the mark ‘Claridges’ in connection with candles. The Judge noted that the trade mark ‘Claridges’ had a “very substantial reputation” and provoked an image of “luxury, glamour, elegance and exclusivity”, which the candle-making company took advantage of.
Examples of trade mark infringement
Real-life examples of infringing activities include the following:
- Putting a trade mark on goods or their packaging without permission.
- Offering goods for sale, or supplying services, under the trade mark.
- Importing or exporting goods under the trade mark.
- Using the trade mark on promotional material, or in advertising.
If you are unsure whether a particular act amounts to trade mark infringement, contact our intellectual property solicitors. They will assess the use of your marks and advise on the best course of action in the circumstances.
How do you identify trademark infringement?
You can only address trade mark infringements you are aware of, so it is important to proactively monitor the market. The following steps can ensure that as many instances of infringement as possible come to your attention.
Trade mark monitoring
A trade mark monitoring system enables you to address potential infringements at an early stage. The system consistently monitors trade mark applications for any that might overlap with your registrations, and alerts you to them. You can then oppose the application or contact the applicant to notify them of your rights.
Our intellectual property solicitors provide a comprehensive, cost-effective trade mark monitoring service. For a small fee, they will monitor all applications within the applicable search parameters. If any application appears problematic, they will contact you to discuss how best to address it.
Online monitoring
Of course, not all infringers go as far as to apply to register a potentially infringing mark. Therefore, many brands undertake consistent online searches to identify any infringements. The searches might look for individuals selling infringing products through online marketplaces, or operating social media accounts under the business’s trade mark. Some brands conduct this type of monitoring in house, whilst others enlist the help of third-party specialists.
Customer feedback
Customer comments can provide a wealth of crucial commercial information, that can help identify trade mark infringements. Consumers might report infringements directly, or infringements might come to light from consumer complaints regarding products they believe are yours but are, in fact, infringing. Monitoring, listening to, and acting on customer feedback not only improves consumer relations but can also help to protect your brand.
Customs/Trading Standards
In appropriate circumstances, trade mark owners can ask Border Force and Trading Standards to help them identify and address trade mark infringements.
Customs
Trade mark owners can make an ‘Application for Action’, asking Border Force to detain potentially infringing goods imported into or exported out of the UK. Our intellectual property solicitors will assist you in completing the application, ensuring all relevant information is provided and liaising with Border Force on your behalf.
Trading Standards
Whilst most trade mark disputes are handled by the trade mark owner under civil law, local Trading Standards offices, supported by the Police, can take criminal action against infringers. If convicted, the infringer can be liable to a fine or even imprisonment.
Trading Standards’ offices rarely have the resources to pursue every trade mark infringement complaint received. They must prioritise complaints, so often focus on those infringements that relate to products posing a physical risk to the consumer, such as flammable clothing or counterfeit tobacco products.
What should I do if I suspect trade mark infringement?
Swift action is vital in trade mark infringement cases. The longer the infringement continues, the greater the potential brand damage. As soon as you become aware of an infringement, you should therefore take the following steps:
- Gather evidence of infringement
Evidence plays a crucial role in proving trade mark infringement. The types of evidence that can be useful include the following:- Screenshots of infringing material, such as social media accounts using your trade mark, or sales listing for infringing products
- Test purchases of infringing items
- Customer complaints or comments regarding infringing products
- Seek legal advice
Timely legal advice is crucial in preventing ongoing trade mark infringements. Our solicitors will consider the merits of your position, advise on the next steps and pursue the course of action required to stop the infringement, prevent future infringements and secure damages.
You should not contact the infringer directly. When they realise that they are on your radar, the infringer might remove all references to their infringements, making it difficult for you to gather the evidence required to prove your case. Some infringers routinely dissolve the company through which their infringements were actioned and take steps to conceal their identity before reappearing under a different guise to continue their infringements. Careful forethought is required before any action is initiated.
Furthermore, the law protects against the concept of ‘groundless threats’ of trade mark infringement proceedings. If a trade mark owner’s threat of proceedings turns out to be groundless, the recipient can issue a claim seeking a declaration that the threats were unjustified, an injunction to prevent further threats and damages for any losses sustained as a result. Our intellectual property solicitors will ensure that any contact with the infringer does not fall foul of these provisions.
Options to tackle trade mark infringement
Several options are available to trade mark owners facing infringement. They include the following:
- Cease and desist letter
A cease and desist letter is a detailed letter to the infringer stating the nature of your rights, the relevant law and their infringing activities. The letter explains the action required to settle the matter and puts the infringer on notice that you will take further legal action should they fail to engage.
Cease and desist letters are a vital aspect of all infringement cases. Often, receiving a cease and desist letter from a firm of well-known intellectual property solicitors, like ours, can suffice to end the infringements, elicit an agreement to refrain from future infringements and secure damages. The Court expects trade mark owners to send a cease and desist letter before issuing a claim, and can penalise a party who failed to do so, should the matter reach trial.
- Injunctive relief
The main reason for pursuing an infringer is to protect your brand. Often, a trade mark owner cannot wait for the Court to hear the case and needs to stem the infringements urgently to prevent ongoing brand dilution and reputational damage. If the infringer refuses to cease their activities voluntarily, the trade mark owner can apply to Court for an ‘interim injunction’ prohibiting the third party from continuing their actions pending trial.
- Litigation
The importance of protecting your trade mark rights cannot be overstated. Often, our solicitors successfully tackle infringements through negotiation or alternative dispute resolution methods, such as mediation. Sometimes, however, litigation is unavoidable. Trade mark infringement proceedings can appear complex and overwhelming but you are in safe hands with our intellectual property solicitors. They are expert litigators, and will guide you through the process until your ultimate aim – protecting your trade mark rights – is realised.
- Contacting the relevant internet platform
Many infringements occur on internet platforms such as Amazon and eBay. Most of these platforms operate trade mark infringement policies and will often remove infringing items at the trade mark owner’s request.
The policies must be used correctly and will sometimes kick start a process that must be adhered to if the products are to be permanently removed from the platform. Our intellectual property solicitors have an in-depth understanding of the trade mark policies of all internet platforms and regularly assist clients to effectively enforce their trade mark rights online.
- Co-existence Agreement
Co-existence agreements allow two businesses to use similar branding without the threat of Court proceedings from the other, subject to agreed restrictions. While their applicability to trade mark infringement cases is somewhat limited, they can be useful in certain circumstances. For example, the infringement might not impact your commercial operations, because the third party operates a ‘bricks and mortar’ enterprise in a limited geographical location, for example. In situations like this, a Co-existence agreement allows you to protect your trade mark rights whilst avoiding the expense and uncertainty of litigation.
- Licensing Agreement
Trade marks can provide a substantial income stream through licensing programs. If a third party’s use of your trade marks is one to which you would not object if it was authorised, you might consider entering into a intellectual property licensing agreement with them, whereby you allow them to use your marks within clearly defined boundaries, in return for payment. The terms of a licensing agreement must be clearly thought through to ensure you retain control of your brand.
Unregistered trade marks
Whilst trade mark registrations are, by far, the most effective form of brand protection, the law of ‘passing off’ offers useful additional protection in some situations.
Passing off is sometimes called an ‘unregistered trade mark’ right since it prevents third parties from exploiting a brand’s goodwill and reputation for their own gain. Competitors using branding the same or similar to yours such that they mislead the public into believing that their offerings are in some way connected with you might fall foul of this tortious remedy, and be ordered to cease their activities and pay damages.
While passing off is doubtless a valuable tool in a business’s brand protection armoury, it can be hard to prove. Strict legal criteria apply, which require often substantial evidence to satisfy. Passing off claims are most commonly brought by brand owners who have not secured trade mark registrations, or as an alternative cause of action in a trade mark infringement claim.
What if the infringer is based in another country?
Most infringements occur online, and wrongdoers do not need to be domiciled in the UK to infringe. Whilst trade marks are territorial rights – meaning they apply only in the country of registration - they can be enforced against anyone who infringes them within that country. So, if a UK trade mark is infringed here, its owners can potentially be liable for UK trade mark infringement, even if based abroad.
However, pursuing a foreign infringer through the English Courts presents a unique set of problems. The trade mark owner must show that the English Courts have jurisdiction over the issue. Targeting UK consumers, or selling to them, will likely suffice, but will depend on the facts of the case. If the English Courts accept jurisdiction, the trade mark owner then faces several procedural hurdles, including obtaining permission to serve the claim outside the jurisdiction, and effecting valid service.
Whilst these obstacles are not insurmountable, they are preferably avoided wherever possible. Our trade mark solicitors are adept at identifying practical solutions to legal issues and achieving their clients’ goals in the quickest, most cost-effective way. For example, they might contact the website host to effect the removal of the infringing material. Alternatively, they might obtain trade mark registrations in different countries and pursue the infringer abroad, working closely with their network of global intellectual property advisors.
Trade mark infringement remedies
The legal remedies routinely awarded to trade mark owners whose rights have been infringed include the following:
- Injunction
Most trade mark owners’ main priority is to stem infringements and safeguard their brand. To do so, they ask the Court for an injunction ordering the infringer to cease using the trade marks. If infringement is established, the Court will likely grant a permanent injunction prohibiting any further infringement of the trade marks. If the infringer breaches the injunction, they are at risk of imprisonment, provided the relevant criteria are met.
- Damages or an account of profits
The financial relief in trade mark infringement cases can be calculated with reference to damages, being the loss suffered by the trade mark owner, or an account of profits, being the gains made by the infringer. The trade mark owner can elect the most beneficial relief.
- Delivery up or destruction of infringing goods
The Court can order an infringer to destroy, or ‘deliver up’ to the trade mark owner, all leftover stock of infringing goods, to take them out of circulation.
- Publication of judgments
All Court and Tribunal Judgments are published on several databases. They are freely accessible to the general public.
It is worth noting that most trade mark infringement claims settle out of Court. Our intellectual property solicitors view litigation as very much a last resort and will strive to settle your matter without recourse to the Court. They are skilled negotiators and often agree settlement terms reflective of the relief that would be granted by a Judge, without you having to pursue your case to trial.
Time limits for trade mark infringement claims
Time limits apply to civil cases in the UK. They are referred to as ‘limitation periods’ and vary depending on the area of law being invoked. In trade mark infringement cases, trade mark owners have six years from the date of the infringement to commence legal proceedings. However, it is important to take action as soon as you become aware of an infringement to avoid irreparable brand damage.
Maintaining and renewing your trademark
Trade mark protection can be perpetual if the marks are renewed every ten years. If you do not renew them, your trade marks will be removed from the Register.
To ensure effective protection, you must use your trade mark in the manner described in its registration. Generally speaking, the mark must be used exactly as depicted, and in respect of all goods and services it is registered for.
If you do not use the trade mark as registered, or use it only in relation to some of the specified goods and services, you may be unable to enforce your rights against an infringer. Worse, the infringer may have scope to issue a counterclaim against you for non-use. If successful, your marks might be revoked, at least in respect of the goods and services you have not used it in connection with.
Summary
Trade marks are a crucial element of brand protection, and must be rigorously enforced against infringers. Trade mark infringement law is vast, complex, and littered with pitfalls for the unwary. Our intellectual property solicitors have an exceptional depth of understanding of the relevant law and procedure and are skilled at identifying creative solutions to any infringement situation. They will swiftly identify the quickest and most cost-effective way of enforcing your rights, protecting your investment, maintaining your brand’s identity and safeguarding your commercial reputation.
