What are Some Defences to Trade Mark Infringement in the UK?

If you have a business in the UK, consider registering a trade mark. You may also wonder if you can use someone else’s business name because it would suit your business perfectly. However, using someone else’s assets without permission can leave you liable for trade mark infringement. This article will explain what trade mark infringement is in UK law and potential defences if someone accuses you of trade mark infringement.

What is a Trade Mark?

A trade mark registration is a form of intellectual property protection that gives owners the exclusive right to use their trade mark about the goods and services they have covered on their registration. 

A trade mark could be made up of words, logos, sounds, symbols or colours. Alternatively, it can be a combination of any of these. Notably, the trade mark must distinguish your business from others. Businesses will usually register a trade mark for their business name or logo.

Trade Mark Infringement

You are infringing on someone else’s registered trade mark rights if you use their name, logo or other sign in the course of business, for similar goods and services to those covered in that registration. You may also infringe if you use an asset that is too similar to a registered trade mark. 

Defences to Trade Mark Infringement

You can rely on several defences if someone accuses you of trademark infringement. We will explain each below. 

Use of Another Registered Trade Mark

A registered trade mark allows you the exclusive right to use that trade mark about what goods and services are listed on your application. This is a valid defence against trade mark infringement. 

The person accusing you of trade mark infringement would need to object to your trade mark through the Intellectual Property Office to have your registration removed before they could validly accuse you of infringement.

Use of Your Own Name or Address

If you use your own personal name and address, this is a defence against trade mark infringement. This must be the name you are usually known by. So you cannot change your name to capitalise on someone else’s trade mark.

Using Terms That Describe Your Product 

If you use descriptive terms to talk about your company’s offerings honestly, this is not trade mark infringement. For example, if you sell coffee made from beans sourced from a particular area of Brazil, you can describe this area, even if someone has a registered trade mark that includes that area name.

The Trade Mark was Not Registered at the Time You Used It

Suppose you were using a sign before the claimant registered their trade mark. In this instance, trade mark infringement may be defended if you can demonstrate that you accrued your rights in the locality where you used your trade mark. Please note, though, that this defence may not always be successful, and we recommend relying on your own registration instead. 

Separately, if you used a sign during the expiry period of a registered trade mark but later restored that trade, it would not be considered trade mark infringement. 

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The Other Business “Acquiesces” Your Use of a Registered Trade Mark

The legal concept of “acquiescence” in the context of trade marks essentially means that the other business has known about using your registered trade mark for so long that they lose the right to oppose your registration. Although this is not a defence to “infringement” per se, this would mean that the claimant would lose the right to apply to invalidate your trade mark. In other words, legally, they are deemed to “accept” your use of your trade mark. 

You also must have a registered trade mark to claim acquiescence. You can only do so concerning your goods and/or services that the other business was actually aware that you were providing.

Remedies Available for Trade Mark Infringement

If you are found liable for trade mark infringement, the claimant can seek several different remedies. For example, they can:

• obtain an injunction to prevent you from using the trade mark;
• seek delivery or destruction of any goods that infringe their trade mark; and
• be awarded damages.

Trade mark infringement could also potentially lead to criminal offences. For example, counterfeiting is a criminal offence. Engaging in it could lead to hefty fines and even prison time.

Avoiding Trade Mark Infringement

To avoid any potential trade mark infringement claims, you should check for registered trade marks that might be similar to the one you intend to use. However, you may still have concerns about using a particular logo or name. In that case, a trade mark lawyer can also advise you about the potential for trade mark infringement.  

If you want to use someone else’s trade mark, you can also request permission from the trade mark owner. You can find them through the Intellectual Property Office’s trade marks database.

Key Takeaways 

If someone accuses you of trade mark infringement in the UK, there are several defences. These include:

• that you have an existing trade mark registration;
• you are using your own name and address;
• you are using the terms to describe the characteristics of your product; or 
• the claimant did not have a registered trade mark at the time of use.

The consequences can be severe if you are found liable for trade mark infringement. It is always better to avoid infringing anyone else’s trade mark than deal with potential litigation costs.

If you need help with defending a trade mark infringement claim, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documsents. Call us today on 0808 196 8584 or visit our membership page.

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