What happens when a trade mark is used by someone else?

Alertness is only the beginning of enforcing trade mark rights

Words by Dr Martin Douglas Hendry

Introduction

A trade mark is a registered brand element which is often a word, phrase, or logo that identifies a product or service that distinguishes it from those of other manufacturers. Trade marks are important because they allow consumers to know what they are buying and help businesses to identify and protect their products.

Examples of famous brands whose various elements are protected with trade marks include:

McDonald's
Coca-Cola
Nike
Mercedes Benz
Apple
Ferrari
Chanel
Louis Vuitton

Our team at Virtuoso Legal help businesses with trade marks every day. In fact, trade marks and IP is all we do! Whether it is helping people secure their brands, or helping people deal with trade mark infringement claims (either side of the issue)!

From this 360-degree view, we are uniquely able to help businesses get to grips with trade marks and avoid the risks involved with unauthorised use – or enforce against it.In this blog, we will describe what happens when a trade mark is used by someone else – and how the trade mark owner is best placed to react. Let’s begin!

Why businesses need trade marks

If a company does not have a trade mark, it may be difficult for that company to prove that it is the source of its products or services. This can lead to legal problems and disputes with other companies.

This could lead to lost revenue from sales of counterfeit goods or services, and damage to the company's reputation.

A trade mark can help to prevent others from using your name or logo without your permission, and it can give you the ability to take legal action against anyone who does so.

In effect, enforcement of the trade mark is what stops other people from recreating the same look and feel as you in the marketplace.

This way the customers and clients know that the goods and services they are getting come from you and no one else.

Despite this, even trade mark owners encounter unauthorised trade mark use, whether it is deliberate or inadvertent.

It is important to note that a trade mark does not enforce itself, and whilst ownership of a trade mark makes it easier to stop infringement, it still requires active awareness of infringement going on as well as enforcement of trade mark rights by the business.

As such, nothing happens when someone else uses a trade mark until the trade mark rights owner takes action to enforce the rights that they have over their brands.

Defences to claims of unauthorised trade mark use

Of course, there are some ways in which people who don’t own trade marks are capable of using them freely.

The main exemptions to trade mark use by an unauthorised party are:

defendant’s use of own registered trade mark for goods/services for which the mark is registered
defendant’s use of own name and address (provided the use is in accordance with honest practices in industrial or commercial matters). This only applies to an individual’s name and not the name of a company
defendant’s use of signs or indications which are not distinctive or which concern the characteristics of goods/services, such as kind, quantity, quality, intended purpose, value, geographical origin, time of production (provided the use is in accordance with honest practices in industrial or commercial matters)
defendant’s use is for the purpose of identifying or referring to goods or services as those of the proprietor of the trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service—in particular, accessories or spare parts (provided the use is in accordance with honest practices in industrial or commercial matters)
defendant has an earlier right in the mark in a particular locality

Source: Trade Marks Act 1994

Despite this, the factual and legal basis for the above is best ascertained by a legal professional – especially should a legal claim or pre-action correspondence have been received.

How to enforce trade mark rights

99 times out of 100, a trade mark owner will seek to assert their rights over any infringing that is occurring.

This is achieved via the following process of actions:

Have the relevant brand elements registered as trade marks in the correct jurisdictions and classes
Once registered, monitor, and watch these trade marks to be alerted to any prospective and existing registrations that may cause issues.
if alerted to somebody else using a trade mark, begin pre-action legal proceedings typically by drafting and sending a “letter before action” asserting your right and providing undertakings to the defendant
If these undertakings are not fulfilled a legal claim is issued in order to enforce the trade mark rights by law, in certain circumstances this may lead to a trial

Ultimately, the enforcement of trade mark rights is a commercial decision for the rights holder and relies upon balancing two key criteria:

The commercial benefit of the trade mark in question and the potential damage to the brand by the infringer
The appetite and resources available to enforce the claim on behalf of the rights holder.

In many senses, this requires a “cost-benefit” analysis to weigh up the pros and cons of enforcement.

Should trade mark owners always enforce against infringers?

As an intellectual property specialist law firm, we advise our clients on the commercial benefit of maintaining brands which are unfettered and undiluted by others’ activity.

Simply put, it is hard to “put the genie back in the bottle” once insufficient brand protection has resulted in brand dilution.

However, blanket enforcement is not advised as it can be prohibitively expensive, and, in certain instances, result in counterclaims when unjustified. As such it is always important to ensure that you have engaged with experts on each instance of enforcement to weigh up the pros and cons.

Ultimately navigating the brand protection space is all about an emphasis on impactful actions and prioritisation of protecting the most important brands from the most significant threats. This is something that requires an expert eye and awareness of the commercial goals of the company in question.

I think I may have used someone’s trade mark – what should I do?

If it is you that has used someone else's trade mark, you need to contact a solicitor as soon as possible.

Whilst you may not have received a claim against you, it is likely that this will happen –and it is important to make sure that you limit your exposure to legal liability as much as possible.

Typically, this will also involve immediate censure of using the infringing brand – as this will limit the magnitude of the claim you might receive from the trade mark owner’s legal team.

If you believe that this may be the case and that you are using someone’s trade mark without authorisation, get in touch with our team to discuss options and next steps.

Conclusion

In this post, we have looked at how trade marks protect key brand elements that make businesses’ products and services recognisable to the buying public.

If someone else uses a brand element whose trade mark owner has registered (unless done so under legal exemptions) it is likely to result in pre-action correspondence and perhaps even a legal claim.

Trade mark owners need to legally own a trade mark, be vigilant of what is out there and then actively seek to enforce their trade marks where relevant – as enforcement is not automatic.

This is best undertaken in a proportionate manner and in line with the business’s commercial interests – protecting key assets and eliminating the most significant risks.

Those who think they may be using someone else's trade marks without authorisation need to stop doing so to mitigate the impact of a claim against them.

All of this is best undertaken with specialist assistance, to ascertain the specific priorities, risks and facts of an alleged trade mark infringement.

Our team help businesses with trade marks every day and would be happy to speak to you if you are seeking to enforce or defend a prospective trade mark infringement claim.

To find out about the next steps or understand more, click the button below to submit an enquiry and speak to our team today.

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