Summary
- Trade mark infringement occurs when you use the same or a similar sign to a registered trade mark in the course of business for the same or similar goods and services, and can result in injunctions, damages and, in cases of counterfeiting, criminal liability.
- Several defences are available, including holding your own registered trade mark, using your own name, using genuinely descriptive terms, or demonstrating prior use before the claimant’s registration date, though the strength of each defence depends on the specific circumstances.
- Acquiescence can prevent a trade mark owner from invalidating your registration if they have knowingly tolerated your use of a similar mark for a sufficient period, but this is not a straightforward defence and requires your own registered trade mark to rely on it.
- This article is a plain-English guide to trade mark infringement and available defences for business owners in the United Kingdom, written by LegalVision’s business lawyers.
- LegalVision specialises in advising clients on intellectual property protection, trade mark registration and infringement disputes in the UK.
Tips for Businesses
Search the Intellectual Property Office trade marks database before adopting any new business name, logo or product name. Register your own trade mark as early as possible rather than relying on prior use as a defence. If you receive a trade mark infringement claim, get legal advice before responding, as the available defences are fact-specific and some are stronger than others.
Using someone else’s trade mark without permission can expose your business to an infringement claim, even if the similarity was unintentional. Understanding where the line sits matters whether you are building a brand, choosing a business name or responding to a letter before action. If you are facing a claim, there are recognised defences available under UK law, and knowing them early can make a significant difference to the outcome. This article will explain what trade mark infringement is and the defences you can rely on if someone accuses your business of infringing their trade mark.
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.
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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.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
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.
What to Do If You Receive a Letter Before Action
A letter before action is a formal letter from a trade mark owner, or their lawyer, claiming you are infringing their trade mark. It will usually demand that you stop using the mark immediately and may seek financial compensation.
Do not ignore it. Failing to respond can result in court proceedings being issued against you.
When you receive one, you should:
- read it carefully and note any deadlines for response;
- avoid making any admissions in writing before taking legal advice;
- check whether the trade mark cited is actually registered and covers the relevant goods or services; and
- consider whether any of the defences covered in this article apply to your situation.
Responding promptly and correctly can prevent the dispute from escalating. A trade mark lawyer can assess the strength of the claim against you and help you draft a response that protects your position without unnecessarily inflaming the situation.
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, LegalVision provides ongoing legal support for businesses through our fixed-fee legal membership. Our experienced intellectual property lawyers help businesses manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 0808 196 8584 or visit our membership page.
Frequently Asked Questions
When might I be accused of trade mark infringement?
You could be accused of trade mark infringement if you use the same or similar trade mark as one that is already registered. When considering a new business or product, checking for other companies using similar terms is good. You can check the Intellectual Property Office’s trade marks database for registered trade marks that may already exist.
How can I use someone else’s trade mark legitimately?
You can contact the trade mark owner and ask them for permission to use the term. Depending on your reasons for using the trade mark, they may be happy to either sell you the trade mark or sell you a licence to use it.
What remedies can a trade mark owner seek for infringement?
A trade mark owner can apply for an injunction to stop you using the mark, seek delivery or destruction of infringing goods and claim damages. In serious cases such as counterfeiting, trade mark infringement can also result in criminal prosecution, significant fines and imprisonment.
What is acquiescence in trade mark law?
Acquiescence occurs when a trade mark owner has known about your use of a similar mark for so long that they lose the right to challenge it. To rely on this, you must have your own registered trade mark and the other business must have been aware of your specific goods or services.
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