Avoid trade mark infringement at all costs!
Defending a trade mark infringement case can be costly and highly disruptive to a business. Key to this being able to navigate the brand landscape with certainty and avoiding prior registrations and other issues that may arise. Read our general guidance below.
Disclaimer: This Virtuoso Legal article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own solicitor on any specific legal questions you may have concerning your situation.
WHAT IS A TRADE MARK?
To avoid trade mark infringement, it is important to first have a strong grasp on what a trade mark is.
Businesses attach “signs” to themselves, their products and their services.
These can typically be a name, a logo or other kind of sign which helps the buying public recognise the origin of goods or services.
Think the Nike “swoosh”, “Admiral” for insurance services or Gmail for Google’s email product.
These signs can be registered as trade marks, which, broadly speaking, prevents others from using identical, or similar signs that lead to confusion in conjunction with their own goods and services without permission.
Within businesses, registered trade marks become very valuable assets, especially as the business and its products or services grow in popularity.
This is because a trade mark allows you to have “monopoly rights” over the use of the brand:
- Stopping others from using identical or similar marks for their competing offerings
- Allowing businesses to license or franchise brands to others to use for commercial gain
Registering key signs (e.g. names and logos) as trade marks is an important activity for any growing business.
HOW DOES TRADE MARK INFRINGEMENT OCCUR?
When a company has successfully registered a trade mark, they are entitled to enforce their monopoly over its use.
As such, as an example, trade mark infringement occurs when a sign that has been registered as a trade mark is used by someone without permission.
Once a company becomes aware that someone is infringing its trade mark, they may issue legal proceedings – which if fully realised can result in a court trial to resolve.
Typically, they will ask for a set of “undertakings”, with various requests made within their perceived trade mark rights. In this way, defendants may also find themselves bound to agreements with trade mark owners – often resulting in a costly rebranding exercise. More on undertakings below.
For this reason, it is important to be careful not to infringe trade marks, as the remedies involved can be significant for defendants.
Depending on the nature of the infringement, the trade mark owner may claim infringement for the use of:
- an identical mark for identical goods/services
- an identical mark for similar goods/services and there is a likelihood of confusion
- a similar mark for identical goods/services and there is a likelihood of confusion
- an identical or similar mark for dissimilar goods/services and the trade mark has a reputation in the UK
There are a number of other factors that may come into play.
For example, if the trade mark in question is of a very high reputation, it may be enforced in relation to dissimilar goods/services.
For example, a trade mark infringement suit would likely follow from a business using the Apple logo under legal services in the EU – even though the Apple logo is not a registered EU trade mark in relation to legal services.
Notably, where there is an infringement case, the courts/IPO don’t necessarily look at classes, but the goods and services being sold under the sign.
In many cases, identical or highly similar marks can coexist in different classifications, or jurisdictions.
Notably, trade mark registries are becoming increasingly saturated, meaning that with each day the risk increases that use of a brand without due diligence will result in a trade mark infringement claim.
For this reason, it is recommended to avoid "DIY" registrations or use of platforms online which do not include expert advice.
Why is it important to avoid trade mark infringement?
There is always stepping on the toes of a trade mark owner and inviting a trade mark infringement claim against them – especially as registries are increasingly populated.
Enforcement is especially likely where bigger companies are concerned, as they tend to operate with brand protection in mind regularly enforcing their rights far and wide.
This typically results in a “David vs. Goliath” format to claims, with smaller, less savvy operators finding themselves in receipt of trade mark infringement claims from larger proactive entities.
Businesses who receive a trade mark claim against them can suffer serious commercial consequences, including but not limited to:
- Injunctive relief, both on an interim and final basis – immediately ordering the halting of use of the trade mark prior to and after trial
- Offering up, transfer and destruction of goods bearing the infringing mark
- Damages on account of lost revenue, or an account of profits
- Legal costs associated with bringing the claim
- Rebranding of the company or relevant goods to no longer infringe the mark
As a trade mark is a monopoly right, the owner of a trade mark infringement claim fairly easily, and far more onus is placed on the defendant to defend than if the claimant did not have a trade mark.
Note: that unregistered trade mark rights can be enforced, this is known as a “passing off” claim.
Defending trade mark infringement unexpectedly can cost a significant amount of time and money – and is best avoided where possible.
Furthermore, in certain cases the best result will still mean a loss for a business, simply making the best of a bad situation.
As such, it is very important to make sure that new trade marks, brands, products and services are not at risk of allegations of trade mark infringement, ideally being cleared entirely before they are launched.
If you have received a claim against you relating to trade mark infringement and need to defend it, we are happy to discuss your options and the best path to resolving the claim. Click the button below to get in touch with our team.
Established defences for trade mark infringement
There are a number of established defences that a defendant can take when it comes to trade mark infringement.
These are as follows:
- Honest concurrent use
- Use of “own name” or address in the sign
- Use of the sign to indicate the characteristics and/or intended purposes of the goods and services it is branding
- Timing – i.e. the alleged infringed mark not being registered a the time that it was used by the defendant
Despite those which are detailed above, it is important that these are evidenced and asserted by a legal team who are familiar with intellectual property matters as incorrectly asserted defences can cause serious problems in defending a claim.
Click the button below to get in touch with our team if you need help defending a trade mark infringement claim.
Avoid Trade Mark Infringement
Whilst this post should not be taken legal advice, there are a number of things that new businesses can do to mitigate the risk of receiving a trade mark infringement claim.
Step 1: Devise a Truly unique brand
When devising a brand, you should always aim to be entirely unique.
This will help reduce the chance of a trade mark existing within the category and classifications you are looking to use it in. (And later, you can then register this later as a trade mark yourself.)
Remember, if the idea is a great one “inside the box”, chances are that someone else may have already thought of it!
Aiming for something unique will likely benefit you in three ways:
- It will be less likely that someone else has thought of that sign, as such it will be less likely to be infringing someone’s registered trade mark
- You will not be at risk of not being able to register it as a mark as it will not be laudatory (e.g. “Number 1 Laundromats”) or descriptive either (“The London Computer Company”).
In contrast, what does “Apple” really have to do with technology? The only association we have now is something that is entirely down to Apple’s goodwill and reputation for its products.
This is the sign of a truly unique and powerful brand or trade mark if registered.
Step 2: Clear the landscape
Once you have a brand in mind that you believe to be unique, the next step is to get an idea of the landscape - before you launch anything.
The first port of call is the Intellectual Property Office website, which will allow you to search the trade mark register for existing marks that might cause an issue.
In addition to this, you may also want to search Google, social media platforms and online marketplaces such as Amazon, eBay, AliExpress and Etsy for any brand footprint – should these be relevant to your proposed use of the brand.
This may seem simple to do, but doing so only reveals how complex trade mark clearance can actually be. This is especially so for brands that will have an international reach (many online brands can become international from the outset).
Where is the line, for example, between something that is similar and something that is not? And which classes are overlapping or not?
It is important to be able to take a dispassionate and unbiased view of this. This can be difficult for a business owner, especially when they have identified a brand that they really want to use, and usually less familiarity with the legal definitions involved.
Bear in mind also that some brands will quickly have an international footprint – and as such, require clearance across multiple different trade mark registries.
Truly, the only secure brand is one that has received full clearance from specialists who are familiar, experienced experts of clearing brands. The expertise and advanced software involved provides a much higher likelihood of the brand being secure to use and able to effectively perform in the marketplace.
You may seek IP specialists to do this in conjunction with registering the brand as a trade mark.
Remember, a “this will be fine” approach, may often come back to bite in a way that is far more financially onerous if you did the due diligence beforehand.
Step 3: Secure The Brand
If the course is definitely clear – the next step to avoid trade mark infringement is to register the trade mark.
This can be achieved relatively cheaply and is something that once secured pays back in spades as it allows you to enforce any encroachment on your brand and develop commercial activities around it.
The reason for this is that even if someone has not registered it, there may still be someone using the brand in an unregistered capacity, which could cause issues. Or someone else may come along later and register it – limiting future use.
Let me explain.
Unregistered trade marks can be protected by their users via the tort of “passing off” – this essentially allows them to claim some limited rights over the use of the brand, if they can prove reputation, revenue and geographic scope of use.
However, by securing the trade mark yourself you will be in the best possible position to secure use of the mark in the way that benefits your business most into the future.
If someone is using that sign as an unregistered brand and you secure the trade mark you will be in the best position to assert rights over that brand moving forward.
Get in touch with our team by clicking the button below if you need assistance in securing the brand your want as a registered trade mark.
Step 4: Look far and wide (and into the future!)
As many businesses operate online brands can quickly gain an international footprint.
Furthermore, businesses that are successful at home may quickly move into new territories such as the EU, China and USA – requiring the brand to be available and secure there too.
When it comes to trade marks you should expand your search further afield rather than just the UK, but the mark is not available in in the EU for example.
A cursory search on the World Intellectual Property Organisation website (visit here) for an international brand.
There are many different considerations that come into play with international registrations, including localisation issues and transliteration into different written languages, for example.
Advice from a specialist can clear your brand effectively and set you up with a platform to build a global reputation without the risk of having to defend infringement claims.
If you would like to speak to our specialists about scalable international brand protection, get in touch by clicking the button below.
Step 5: When in doubt, Seek specialist Guidance.
Within the legal area of intellectual property, trade marks are a key area of law that is especially important to get right – as oversights can result in weakened brand position or even trade mark infringement proceedings resulting in costly rebranding and litigation exercises.
If you are seeking to prevent a trade mark infringement claim, this means securing a watertight brand in the areas you operate in which you know you can build a business around without threat of costly and concerning trade mark infringement proceedings.
In each case, specialist advice is recommended as this will allow you to reach a commercial solution that best fits your commercial priorities.
A brand, in its best-maintained form, is an asset that you can invest in. The costs associated with clearing and registering a brand are proportionately small compared to the benefit of having secured one which is recognised and reputable to your buying public.
If you would like to speak to our specialist team, click the button below to get in touch to discuss your requirements.
ABOUT VIRTUOSO LEGAL
Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide.
Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court. In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique.
The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.
Virtuoso Legal helps businesses grow and protect their big ideas.
Get in touch with our team today, to talk about how we can help your business grow.