How Can Business Owners Enforce Their Trade Mark?

If you own a registered trade mark, you may encounter a person or company who attempts to use your trade mark for their benefit. In this instance, your business could face reputational damage as a result of your trade mark’s misuse. However, you should be aware that you have the right to exclusively use your registered trade mark. Consequently, you can enforce your rights if someone uses your registered trade mark without your consent. This article will explain how you can enforce your rights to use your registered trade mark. 

Trade Mark Essentials

LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.

Download Now

What Does Enforcing a Trade Mark Mean?  

Once you have successfully registered your trade mark with the Intellectual Property Office, you gain intellectual property rights that protect your trade mark. Trade mark registration provides your business with exclusivity over the trade mark for the goods and services you have registered it for. 

Enforcement can take many forms, including:

• informal agreements; 
• alternative dispute resolution methods, such as mediation; and
• court proceedings. 

Importantly, you should note that the Intellectual Property Office does not monitor the use of trade marks. Therefore, it is your responsibility to protect your trade mark from misuse. This means that monitoring potential trade mark infringement is crucial.

Why is It Important To Use the ™ and ® Symbols?

Businesses can use the ™ symbol against any trade mark, whether registered or not. Unregistered trade marks are more complicated to enforce than registered trade marks. Therefore, using the ™ symbol can deter others from misusing your trade mark. The ™ symbol notifies other businesses that:

• you are actively using your trade mark; and 
• they should recognise its status as a trade mark and importance in relation to your brand.

On the other hand, the ® symbol represents registered trade marks. You can only use the symbol once you have registered your trade mark with the Intellectual Property Office. An essential element of enforcement is deterring competitors from using your trade mark in the first place. You can do this by publicising your trade mark registration. 

Once the Intellectual Property Office has registered your trade mark, you can use the ® symbol in England. By doing this, you show other businesses that you hold legally enforceable rights. It is not mandatory to use the ® symbol, but you may find it helpful as a method of preventing misuse.

How Can Trade Mark Owners Monitor Their Trade Mark’s Use? 

As a trade mark owner, you must be acutely aware of any misuse of your trade mark. After all, the Intellectual Property Office will not carry out this duty for you. Therefore, preventing misuse begins with carefully monitoring competitors who may use it without your consent. 

Whether your trade mark is unregistered or registered, you should monitor the areas of industry you are involved in. This is crucial to keep abreast of any unpermitted trade mark uses.

What To Do If Someone Is Using Your Trade Mark

If you find another business is using your trade mark without your consent, you should act quickly and efficiently. If you fail to act, your competitors’ continued use of your trade mark can cause you financial or reputational damage.

There are a few different options you can take in this situation, as outlined below. 

1. Informal Agreements

In the first instance, you may initially address potential infringement by simply asking the business to stop using your trade mark. There are often instances where a business could be innocently using your trade mark. In other words, they may not realise that it is registered exclusively for your business’ use. 

In this situation, a simple letter requesting they stop using the trade mark could stop their actions efficiently. This is often called a cease and desist letter and can result in the competitor ceasing use upon receipt.

2. Alternative Dispute Resolution

However, if a business is knowingly using your registered trade mark without your permission, you may need to take stronger action. The next stage is generally to consider alternative dispute resolution, such as formal mediation.

In this instance, a qualified mediator is appointed to facilitate discussions around the trade mark’s use. At the end of the proceedings, an agreement may be drawn between you and the other business. This will hopefully result in your trade mark rights being enforced successfully.

3. Litigation

If mediation proceedings are unsuccessful, you may have to resort to formal legal proceedings. In this case, you will need to instruct legal professionals to represent your case. 

If you have registered your trade mark, you can more easily prove your rights and ownership. If you are successful, the court will order the offending party to cease using your trade mark. The court may also mandate they pay compensation for any financial or reputation loss you have suffered. 

Key Takeaways

Your trade mark is linked to your brand and represents your business to your customer base. Therefore, if someone is misusing your trade mark without your consent, you should send them a letter requesting them to stop use immediately. If this does not work, you can then turn to alternative dispute resolution, such as mediation. Mediation has a high success rate and should hopefully result in your competitor recognising your trade mark rights. However, if mediation fails, you should consider formal legal proceedings as a last resort. If a court finds that another business has breached your rights, they will likely need to pay compensation for any loss your business has sustained.

If you need help enforcing your trade mark rights, 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.