Alleged trade mark infringement

'I have received a letter alleging I have infringed a trade mark. What do I do?’

Regardless of who you are, receiving an allegation that you have infringed someone’s trade mark rights can come as a shock. It may well be a misconceived complaint or you have made a genuine mistake but no matter the situation, our trade mark solicitors can provide support and help you overcome this challenge for your business.

What shall I do before contacting a trade mark solicitor?

• Do not panic – this happens to most businesses at some point
• Do not reply – until you’ve spoken with  a trade mark litigator - not even if your reply is marked “Without Prejudice”
• Diarise any deadlines mentioned in the letter, prioritise the issue and schedule an initial consultation

You may feel compelled to stop selling under the brand complained of, and remove any reference to the brand on social media, or your website, or online marketplaces.  If so, take records first. Any screenshots must be formatted in a way for us to be able to prove their date. It may be better to have our skilled legal support do the job for you before you delete.

Triage

As trade mark litigators , as soon as the letter comes to our attention, we will triage the situation, which includes establishing whether there is a real risk of imminent litigation and if so, in what jurisdiction, for what cause and with what consequences.  From that, we will help you form a strategy.

Strategy

We will develop an effective strategy once we have identified what this claim means to you and have an understanding what is likely to happen next.

Strategy requires teamwork. Below are just a few of the questions we will consider –you will know the answers to some and we will take care of the rest:

The Accuser:

• Who sent the letter – is it a solicitor or a business owner and what is their reputation?
• What’s the backstory here and is there a prior relationship?
• Are you likely to come across the complainant again in future and if so, how?
• Has the complainant got deep pockets? 

The Complaint:

• Ethically, can the complaint be considered fair, manufactured, or somewhere in between?
• What is the tone of the letter – aggressive and threatening, or more conciliatory (are they looking to do a deal?)?
• Does it relate to sales of a product through social media platform or an online marketplace? Will the platform’s terms and conditions affect the Complaint?
• Are all the legal hurdles for trade mark infringement addressed and accurately so?
• Have they supplied evidence and would it stand up in court?
• Are there any procedural hurdles we can put in their way?
• Which of our hundreds of previous cases does this most closely resemble?
• Realistically, what are the IP judges we appear before likely to make of this?

You:

• What resources of time and money do you have to fight this allegation?
• Do you have a counterclaim?
• How high are the stakes for you and the complainant?

In order to find the best strategy, you and your trade mark litigator need to exchange information until you both understand what this inbound accusation means for you.

What form may a response to a trade mark infringement letter take

What we do next will take into account the many similar cases we have seen before.  Sometimes, the most sophisticated strategy results in a short letter – at times, you won’t even tell your accuser that you are represented.  In some cases, an attack is the best form of defence but other times, a show of respect can smooth troubled waters. We may negotiate as a team, with one of us taking the “good cop” role and the other being more assertive. Our promise is that the strategy we agree on will be tailored to you and what you seek to achieve.

The legal background: Snapshot of a trade mark infringement case

In the small number of trade mark infringement cases that go to court, accusers need to show that:

• Your brand is either identical or similar to the trade mark and for identical or similar goods/services to those covered by the trade mark; and where the brand or goods/services are similar there is a likelihood of confusion by consumers. Alternatively, that your brand is identical or similar to the trade mark, for dissimilar goods/services but the trade mark has a significant reputation and your use is unjustified and takes unfair advantage of, or is detrimental to the distinctive character, or repute of the trade mark;
• Your use of the brand was in the course of trade;
• They did not consent;
• Your use affects, or is liable to affect, the functions of the trade mark;
• They are the people entitled to a remedy; and/or
• (If they want an injunction) you intend to continue doing what they complained of.

Paying damages usually wouldn’t be dealt with by a court until all the questions above had been dealt with, which typically happens at a second trial. 

To find out more about trade marks, read our trade marks: FAQ’s guide. But if you receive an accusation of trade mark infringement, we encourage you to contact us immediately so we can help quickly assess the situation and agree a strategy for how to deal with the allegation.