Receiving a trade mark infringement claim can be scary
But it is important to know exactly what is going on, and your liability before you act.
Photo by Dan Meyers on Unsplash
Words by Dr Martin Douglas Hendry
As a business owner, protecting your brand is essential to safeguard your reputation.
Unfortunately, even with the best intentions, you may find yourself receiving a trade mark infringement letter, detailing a claim made against you by a trade mark owner.
In this blog, we share an example of a trade mark infringement story (one similar to many we have encountered over the course of time) and the typical steps taken to address the situation.
We hope, if you see yourself in this kind of situation, that this article is of some help.
Personal Trade Mark Infringement Story
(What follows is an anonymised account of a trade mark infringement story, names and some details have been changed to maintain confidentiality).
“Last week, I received a letter from a law firm accusing me of infringing their client's trade mark.
The letter stated that I was using a similar name and logo to their client's registered trade mark, which was causing confusion among customers.
I was shocked and upset as I had no intention of infringing on anyone's trade mark when I set up my business.
When I chose the name and the brand I was careful to make sure that someone had not registered the company name already and, by searching on Google and Facebook that there wasn’t anyone else using the name.
The letter I received mentioned a trade mark that was kind of similar, but not something I had anticipated would cause a problem. Mine felt totally different.
The letter has asked for me to immediately stop using my brand, otherwise, there will be Court proceedings which might end up legally compelling me to change and also pay them.
I have a time limit to decide what I am going to do.
So now I am either going to have to rebrand, which means paying a designer for a new brand, and also changing all of our web presence and signs in our shops; or seek to fight it.
This is not what I had planned, and now my money and time is going to have to be spent on this, rather than doing what I love and helping the business grow.”
This tale is not unfamiliar and is a conversation that we often have with people when they get in touch with us.
It is important to understand that legal claims are only as compelling as the arguments written on the letter – and whilst receipt of a claim can be scary, if not legally sound, you may be able to dismiss it.
However, whilst this may be the case it is important to not dismiss or respond to a letter unless you have a legally watertight position.
Indeed, it is often the case that initial letters sent out to alleged infringers may be opportunistic and, if agreed to, compel the defendant to disproportionate and overly restrictive conditions moving forward.
Ultimately, only a legal assessment by experienced experts, well versed in the facts and the law, will determine the accuracy and severity of a claim being made.
Perhaps more importantly, a carefully crafted response and negotiation may further limit the conditions or impact of a claim on a business – with these being aligned with the business’ commercial goals.
Understanding Trade Mark Infringement
But let’s talk a bit more broadly about trade mark infringement – how it occurs and why it’s important.
Trade mark infringement occurs when someone uses a sign, symbol, or logo that is identical or similar to a registered trade mark without the owner's consent.
This can include using the same or similar name, logo, or slogan.
The purpose of a trade mark is to differentiate one business's goods or services from another, and any use of a similar mark can cause confusion among customers, damaging the registered trade mark owner's reputation.
This is often where people stumble, as from a legal and practical point of view – it is not necessarily about whether a new brand is identical to something that has come before…
A small degree of similarity so long as it causes confusion in the mind of the buying public can constitute infringement, as ultimately the trade mark owner, can rightly say that prospective customers or clients have become confused and mistaken one company for another.
Similarity can also take many forms, whether its phonetic, semantic or otherwise. Again, experienced legal professionals offer help here as they can provide the benefit of their legal expertise, experience and a dispassionate view on the degree of alleged similarity.
All the above reflects on the severity of a claim, and ultimately what constitutes a proportionate response (whether the claim can be dismissed, or damage limitation is to be taken.)
Each claim is different – and so is the resolution that can be achieved. It is important to make sure you are in the enlightened position of understanding the exact level of liability before legally committing yourself to certain conditions.
Whilst seeking legal advice can be uncomfortable, it is notable that an unnecessary loss in profit and revenue from agreeing to withdraw a brand (when not required) may cost a business a lot more in the long run.
Responding to a Trade Mark Infringement Letter
Upon receiving a trade mark infringement letter, it is crucial to respond promptly and take appropriate action.
Failure to respond may result in legal action and potential damages. Timelines are important, and failure to comply with a letter before the action deadline may result in a formal legal claim being brought.
As such it is vital to be aware, before any deadline, of the accuracy and severity of a claim. As above, this can only truly be determined by seeking expert advice from a legal professional with experience in this area.
The letter may request you to cease and desist using the disputed mark and to pay compensation for any damage caused.
Depending on the circumstances, and the advice you have received your representation may respond by either agreeing to cease using the disputed mark, denying the infringement claim, or seeking to negotiate an amicable resolution.
Preventing Trade Mark Infringement
Preventing trade mark infringement is essential to safeguard your brand and reputation.
You can do this by registering your trade mark with the UK Intellectual Property Office and monitoring for any infringements.
By tapping into expert advice and securing a distinct and cleared brand in the first instance, you will have established a “freedom to operate” in your given classifications – and will be unlikely to receive a claim as it relates to trade mark infringement unless you begin using the trade mark in classifications or jurisdictions where you have not registered it.
Furthermore, once you have a registered trade mark, you may also ensure that it is monitored so that if anyone else is infringing your trade mark. At this point you can seek to enforce your trade mark rights to ensure that your brand remains distinct in the marketplace.
Educating your staff on trade mark protection and ensuring that they adhere to your trade mark policy can also prevent any accidental infringements.
Receiving a trade mark infringement letter can be a daunting experience for any business owner.
However, it is important to understand that a legal letter is only as serious as the legal arguments that have been presented, but that any signed undertakings are legally binding.
It is important to reach a clear and precise understanding of the legal liability before committing to any undertakings. The value of good advice here is not to be underestimated, as agreeing to overly onerous demands may cost far more in the medium to long term.
Taking prompt action and seeking legal advice can help resolve the situation and prevent any legal ramifications. By understanding trade mark infringement, responding appropriately, seeking legal advice, and taking preventive measures, you can protect your brand and reputation in the long run.
For more information, take a look at some of our other blogs as it relates to trade mark infringement below. Do you need help with trade mark infringement? Get in touch with our team by clicking the button below.
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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.
DISCLAIMER: The content within this post is for educational purposes only. Virtuoso Legal does not take any responsibility for those that use this information and waives any liability for any resulting effect on your personal or commercial circumstances. If you are experiencing an issue and need advice, we strongly encourage you to contact a solicitor to identify your best course of action.
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