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

If you have a business in the UK, you may be considering 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 is a form of intellectual property protection that gives owners the exclusive right to use their trade mark. A trade mark could be made up of words, logos, sounds, symbols or colours, and can be a combination of any of these. Importantly, the trade mark must be capable of distinguishing 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 trade mark if you use their name, logo or other sign in the course of business. You may also commit infringement if you use an asset that is too similar to a registered trade mark. For example, if you developed a logo, and it was so similar to a registered trade mark that it confused customers, you could be accused of trade mark infringement.

Defences to Trade Mark Infringement

You can rely on several defences if somebody accuses you of trade mark infringement. We will explain each of them below.

Use of Another Registered Trade Mark

If you have a registered trade mark, this allows you the exclusive right to use that trade mark. This is a valid defence to trade mark infringement. The person accusing you of trade mark infringement would need to object to your trade mark through the Intellectual Property Office.

Use of Your Own Name or Address

If you use your own personal name and address, this is a defence to 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 and do so 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 trade mark that includes that area name.

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

Suppose you were using the term before the claimant registered their trade mark. This may also occur where the claimant has allowed their trade mark to lapse. In both cases, your conduct is not trade mark infringement. This is because there was no existing trade mark at the time of use.

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.

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.  

Key Takeaways 

If someone accuses you of trade mark infringement in the UK, there are several defences that you may be able to rely on. 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 characteristics of your product; or 
• the claimant did not have a registered trade mark at the time of use. 

If you are found liable for trade mark infringement, the consequences can be severe. 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 documents. Call us today on 0808 196 8584 or visit our membership page.

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