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. In this guide, we 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.
If you are worried about trade mark infringement or want to improve your brand protection, our trade mark solicitors can help. We will assess your current trade marks, spot any gaps, and advise on registering new ones to cover all key elements of your brand. We also monitor the market for potential infringements and act quickly to stop unauthorised use, whether that’s through formal letters, negotiations, or legal action.
Contents:
- What constitutes trade mark infringement?
- How do you identify trademark infringement?
- What should I do if I suspect trade mark infringement?
- How to resolve a trade mark infringement dispute
- Infringement of unregistered trade marks
- What should you do if trade mark infringement occurred in a different country?
- Trade mark infringement remedies
- Time limits for trade mark infringement claims
- Maintaining and renewing your trade mark
- Summary
What constitutes trade mark infringement?
The following actions may constitute trade mark infringement, if the other person is 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, where the trade mark has a reputation in the UK and the use takes unfair advantage of its reputation, or is detrimental to the distinctive character or the repute of the trade mark.
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 trade mark 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 trade mark 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: Not all infringers go as far as to apply to register a potentially infringing mark. Many brands carry out 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: Consumers might report infringements directly, or infringements might come to light from consumer complaints 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: 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 trade mark 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 they often focus on those infringements that relate to products posing a physical risk to the consumer, such as flammable clothing or counterfeit tobacco products.
Staff training: Educating your employees about your registered trade marks can be a powerful tool in preventing infringement. Your staff interact daily with suppliers, competitors, and the wider market, putting them in a strong position to spot potential misuse of your brand. Training employees to recognise your trade marks, understand what unauthorised use looks like, and know how to report concerns internally means infringement is far less likely to go unnoticed. A simple internal reporting process, backed by regular awareness training, ensures that potential infringements are flagged and investigated promptly.
What should I do if I suspect trade mark infringement?
The longer an infringement continues, the greater the potential brand damage. As soon as you become aware of an infringement, you should take the following steps:
Gather evidence of infringement
Evidence plays an important 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
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.
If you threaten infringement proceedings and your threats turn out to be groundless, the recipient may be able to 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.
How to resolve a trade mark infringement dispute
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 often used in infringement cases. 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. For more information on this topic, read our cease and desist letter guide.
- 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, 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 trade mark 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. If the other party’s activities do not impact your commercial operations, for example, because they operate a ‘bricks and mortar’ enterprise in a limited geographical location, a Co-existence Agreement enables you to protect your trade mark rights whilst avoiding the expense and uncertainty of litigation.
Infringement of unregistered trade marks
Whilst trade mark registrations are, by far, the most effective form of brand protection, the law of ‘passing off’ offers useful 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 that is the same or similar to yours so that they mislead the public into believing that their offerings are in some way connected with you might fall foul of passing off, and be ordered to cease their activities and pay damages.
While passing off is a valuable tool in a business’s brand protection armoury, it can be hard to prove. Strict legal criteria apply, which often require substantial evidence to satisfy. Passing off claims are most commonly brought by brand owners who have not secured trade mark registrations, or as an additional cause of action in a trade mark infringement claim.
What should you do if trade mark infringement occurred in a different country?
The fact that most infringements occur online can add an additional layer of complexity to trade mark infringement matters if the infringer is not based in the UK. Whilst third parties who infringe a UK trade mark from abroad can be liable for UK trade mark infringement, 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 it 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 request the removal of the infringing material. Alternatively, they might obtain trade mark registrations in different countries and pursue the infringer in their home country, 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 choose 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 a last resort and will strive to settle your matter without recourse to proceedings. 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
In trade mark infringement cases, trade mark owners have six years from the date of the infringement to commence legal proceedings. It is important to take action as soon as you become aware of an infringement to avoid irreparable brand damage.
Maintaining and renewing your trade mark
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. 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 sit at the heart of your brand. When someone copies or misuses them, their activities can chip away at your reputation, confuse your customers, and destroy the value of your brand.
Trade mark law is notoriously complex, and the wrong move can waste time, money, or even weaken your position. That’s where having the right support makes all the difference.
Our trade mark solicitors are experts in infringement matters. They will quickly assess the activities you are concerned about, explain your options in plain English, and take action in a way that makes commercial sense, whether that’s stopping the infringement fast, protecting your market position, or avoiding unnecessary escalation. The focus is simple: protect your brand, your investment, and your reputation, without overcomplicating things.
