A trade mark is one of the most valuable assets that a business can own, setting aside your goods and services from others, protecting the quality and reputation behind your brand.
Trade mark infringement is a frequently occurring issue, where third parties try to obtain the benefit of your brand and mislead existing customers. There are key steps that should be followed to (i) protect your brand and (ii) act against any infringement.
The law concerning trade mark infringement is governed by the Trade Marks Act 1994. An infringement occurs where a third party uses a mark that is either identical or confusingly similar to a registered trade mark, which may mislead customers or take unfair advantage of the mark’s reputation. By way of example, this could be where a third party copies a brand name or brand logo, and sells counterfeit products.
The strongest method of enforcing a trade mark infringement claim is where you have a registered trade mark with the UK Intellectual Property Office (UKIPO). Unregistered trade marks may be afforded a limited amount of protection, but the starting position in respect of enforcement is typically considerably weaker, and it is often more costly to pursue an infringement when relying upon an unregistered trade mark. The first step is to ensure that any trade marks are registered.
It may not be brought directly to your attention when a third party is infringing upon your trade mark. It is therefore important to take active steps to ensure that no third party is guilty of an unauthorised use of your trade mark. This can be done as follows:
A key point to note is that an earlier detection of an infringement often results in a quicker and more cost-effective enforcement process.
As soon as you become aware of an infringement (or a potential infringement), it is crucial that evidence of the infringement is collected. This can include:
In the first instance, upon becoming aware of the infringement, typically a cease-and-desist letter will be prepared, which sets out your legal rights and demands that the infringer ceases its infringing activity. This step can sometimes result in an immediate resolution.
If an infringement occurs online, many platforms have reporting mechanisms which can be utilised, which can lead to the quick removal of infringing content and/or accounts.
If initial steps fail and the infringement continues, it may become necessary to issue legal proceedings in the Intellectual Property Enterprise Court (IPEC) or the High Court. The following remedies may be sought against the infringing third party:
It is important to be pro-active and think long-term.
Whilst there are initial costs associated with registering trade marks, by doing so you are protecting both a business’ reputation and its commercial value. If any third party chooses to misuse or infringe upon your trade mark, by having that mark registered, you will be in a much stronger position to enforce against any infringement.
For further insights on trade mark law and how to protect your intellectual property, please contact Jamie Short at jamie.short@ilaw.co.uk or call +44 (0)203 987 0222.
