Summary
- Trade mark infringement in the UK occurs where a third party uses an identical or highly similar mark in the same or similar industry, or uses an identical or similar mark in a different industry whilst benefiting from the trade mark owner’s reputation; infringement can cause financial loss and reputational damage.
- Before commencing formal proceedings, trade mark owners should instruct a lawyer to contact the infringing party, request they cease use, and explore options such as a licensing agreement or mediation; courts expect parties to attempt resolution before taking formal action.
- If informal resolution fails, proceedings can be filed with the Intellectual Property Office or through the civil courts, with the Intellectual Property Enterprise Court in London commonly handling IP disputes; an IP lawyer can advise on the appropriate forum based on the value of the claim.
- This article is a plain-English guide to trade mark infringement proceedings for UK businesses, prepared by LegalVision, a commercial law firm.
- LegalVision specialises in advising clients on intellectual property and trade mark matters.
Tips for Businesses
Act quickly when you identify potential infringement – delay can weaken your position and allow further damage to your brand. Instruct an IP lawyer before making contact with the infringing party to ensure any correspondence is properly drafted. Attempt to resolve the dispute through a cease and desist letter or mediation before considering court proceedings. Keep records of all evidence of infringement, including screenshots, sales data, and consumer confusion, to support any formal claim.
Infringement proceedings in the UK are complex and usually involve intellectual property professionals. When someone infringes on your intellectual property rights, you should instruct an intellectual property lawyer quickly. This article will discuss the benefits of having a legal professional involved from the outset and the process of infringement proceedings within the UK.
Forms of Trade Mark Infringement
Trade mark infringement is when a third party uses:
- An identical trade mark to your registered mark within the same area(s) of industry.
For example, if you register the trade mark “BRIGHTSTAR” for cleaning products and another business begins selling cleaning products under the name “BRIGHTSTAR” without permission, this is clear infringement.
- A highly similar trade mark to your registered mark within a similar area(s) of industry.
For instance, if you own the registered trade mark “LUXE & CO” for clothing and a competitor launches a clothing line called “LUX & CO” with similar branding, consumers are likely to confuse the two brands. This constitutes infringement as the marks are similar, the goods are identical or similar, and there is a likelihood of confusion.
- An identical or highly similar mark to your registered mark within a different area of industry but benefiting from your reputation in the UK.
For example, if you are a well-known luxury car manufacturer with the registered trade mark “PRESTIGE” and a budget hotel chain begins using “PRESTIGE HOTELS”, this could be infringement. Even though hotels and cars are different industries, the hotel chain may be benefiting from your brand’s reputation for quality and exclusivity.
If you are unsure whether someone has infringed your trade mark rights, you should seek legal advice. Knowing how to identify infringement is important for your business. A breach can cause financial loss or damage your reputation.
Brand protection is vital when it comes to intellectual property (IP), and as a trade mark owner, it is your responsibility to protect your rights.
Attempting to Come to an Agreement
Once you confirm trade mark infringement, your lawyer can contact the third party and ask them to stop using your mark. Sometimes, businesses use your mark without knowing it is registered. They may also have designed something highly similar by mistake. A legal professional will be best placed to draft a letter requesting them to cease usage immediately.
Further, a lawyer can offer them a licensing agreement where they could continue to use your registered trade mark in agreed ways in exchange for a fee. Your lawyer can then draft the licensing agreement according to your instructions. Instructing a legal professional when drafting licensing agreements is important due to their precise nature.
If you cannot reach an agreement, a trade mark lawyer can represent you in mediation. Mediation is a form of alternative dispute resolution. You do not need to mediate before starting court proceedings. However, courts expect parties to try to resolve the dispute before taking formal action. Going to court should be considered a last resort.
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Formal Legal Proceedings
If contacting the breaching party does not stop the infringement, you can rely on an IP lawyer to commence legal proceedings on your behalf. You can either file proceedings with the Intellectual Property Office or through the civil courts in the UK.
You will likely need advice on which court to file your legal dispute with as you will need to calculate the value of your claim. An IP lawyer can advise you on which court is most appropriate. The Intellectual Property Enterprise Court (in London) often deals with cases involving IP disputes, as they specialise in IP disputes. Once legal proceedings have started, you will also have the benefit of a representative throughout, who can:
- speak to the court on your behalf;
- advise you on proceedings;
- make arguments for your case; and
- potentially negotiate with your opposition.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Key Takeaways
Trade mark lawyers are intellectual property specialists who have extensive experience with trade mark protection issues and trade mark disputes. If someone is using your registered trade mark without your consent, gaining the insight and legal support of trade mark solicitors is highly advisable. They can deal with a wide range of issues including:
- writing to the third party to request they cease usage;
- drafting licensing agreements;
- assisting with alternative dispute resolution; and
- representing you at court if you wish to commence formal legal action.
If you need help or advice around trade mark infringement proceedings, LegalVision provides ongoing legal support for all 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
What is trade mark infringement?
This is where a third party uses an identical or highly similar trade mark you have registered without your consent. You hold exclusive rights to your mark; therefore, no other party can legally use it without your permission.
Why should I hire a trade mark lawyer?
Trade mark lawyers provide expertise in intellectual property infringement and can assist you throughout the process. They can write letters to your opposition, arrange and attend mediation proceedings on your behalf and also commence formal court action if you wish.
Can I stop someone using my trade mark if it’s not registered?
If your trade mark is unregistered, passing off may still protect it. However, passing off is harder to prove. You must show goodwill, meaning reputation. You must also show the infringer misrepresented its business, goods or services. Finally, you must show that you suffered damage as a result.
Do I have to go to court to resolve a trade mark dispute?
No. Courts expect parties to attempt resolution before taking formal action. Your lawyer can first write to the infringing party and, if needed, represent you in mediation. Formal court proceedings should be considered a last resort.
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