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What is Trade Mark Infringement? Everything You Need To Know

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Overview

To understand trade mark infringement, it is first important to understand what trade marks are and how they work.

What is trade mark infringement - boy reaching to steal a strawberry

 

What is a Registered Trade Mark?

Trade marks tell people:

  1. Where marked goods or services have come from (i.e. as a "designation of origin"). Trademark infringement can arise where the trade mark is used goods or services are similar or identical but are actually from another supplier.

  2. The quality expected of the goods and services. Some trade marks are associated with higher quality products and some trade marks denote less expensive goods and services.

  3. A registered trade mark denotes that these goods and services are not made by competitors or that they originate from unofficial sources

 

An Example of How Trade Mark Law Works: Nike®

Take a pair of Nike® trainers.  include a “swoosh”/” tick” mark on their design. 

This tells the buying public that:

  • The shoes are made by Nike® and do not originate from a competitor (or in the case of items made under license – they are made with the permission of Nike and to the Nike standards.

  • The product would be of a quality expected of Nike® as a result of their reputation and the buyer’s experience of buying previous products. This element is vital in denoting the value of any trade mark.

  • A brand standard may also include the look of packaging and where sold. This again links back to the customers understanding of the quality associated with the trade mark.

  • That the goods are legitimate and authentic as Nike stop other people from using the same brand elements.

Brands like Nike® also become sought after, because of the reputation and goodwill they develop in the mind of the consumer. Brand often spend a lot of their marketing on making sure a particular brand has prestige and quality associated with it. So, for example, the goods or services may be associated with individuals or values that the public find desirable. This allows the company to charge a premium for its products.

So, it is important for Nike to be able to use its brand elements (and to stop others from doing so) to distinguish their shoes from others in the market to the buying public.

Trade mark rights in the world date back millennia, but the legislation in the UK dates back to 1874 when Parliament passed the Trade Marks Act 1874. Such legislation was created on the back of UK exports and particularly the manufacture of china such as Wedgewood. This first trade mark registered was a mark for Bass beer!

Trade Marks Explained

Trade marks are registered rights, that businesses apply for, and that provide legal protection for names and logos for goods and services.

There are 45 different classes of trade marks. In an increasingly competitive World, it is important to make sure that the specifications you need protecting – i.e. the details of the cover that you need are properly drafted. Wide specifications are often rejected and badly drafted applications and specifications render the mark difficult to actually protect which renders the whole process a mistake unless properly done. If you are really serious about creating a great brand you need a registered mark.

In many countries, there are ways to enforce rights over unregistered marks. But these are far more expensive, time-consuming and onerous to enforce.

It is important, however, to avoid risking infringing anyone else’s business' trade marks (registered or unregistered) where possible. Trade mark registrations are always best done by a professional legal advice and that need not be prohibitively expensive.

What Kinds of Trade Marks Are There?

There are many different types of trade marks used by businesses to designate the origin of their goods as their own. Most typically, a company will trademark their company name, but they may also trademark logos, symbols, visual branding elements, colours, sounds, images as well as the names of individual products and services they provide.

Types of Trade Marks

Here is a list of the various types of trade marks which you can register, own and use:

  • Word marks

  • Figurative marks

  • Shape marks

  • Position marks

  • Pattern marks

  • Colour (single) marks

  • Colour (combination) marks

  • Sound marks

  • Motion mark

  • Multimedia marks and even:

  • Hologram marks

The European Intellectual Property Office (EUIPO) provides a good demonstration of the different examples here. There is a wide range of types of different trade mark registrations.

It is important to understand that trademark infringement can occur when any of these types of registered trade marks (or those which are similar enough) have been used without the permission of the trade mark owner.

How Do Trade Marks Work?

There are three main things that you need to know about trade marks:

They are Monopoly Rights

Registered trade marks are known as a “monopoly” right. This is because they grant the trade mark holder a monopoly over the use of that mark – with no one else being allowed to use it without the permission of the rights holder. 

Trade marks can also be renewed until no longer required (typically they are renewed every 10 years). This means that as long as they are continually used and renewed, their protection can last forever (unlike copyright, registered and unregistered design rights and patents, for example).

They are Jurisdiction-Based Rights

A trade mark registered in the United Kingdom protects the use of the mark in the United Kingdom alone. Many businesses fail to obtain the right cover for their brands around the World and this can cause significant problems globally, especially in a hyper connected World.

So, if your business is a fast-food restaurant with a registered UK word mark called “Hunter's Steakhouses”, you may not be able to stop someone in the United States from opening a restaurant chain called “Hunter's Steakhouses”. 

Because of this, it is very important to take jurisdiction (country) into account when you seek to register a trademark or sell products and services internationally. 

We can emphasis this enough – where you make and sell matters from a brand point of view. Increasingly we are seeing trade marks being fraudulently registered around the World and with Chinese competitors or manufacturers taking advantage of those who build a strong brand and trade mark but who fail to obtain registration in their key markets.

It is also important to note that trade mark laws can differ a lot in different countries.

As a real word of caution, companies who need to protect their brand need good strategic trade mark advice from the start. Good advice is an investment in the future of any business.

They are Classification-Based Rights

When registering a trade mark, you register the mark within a (or number of) certain classifications. 

There are 45 different classes in the Nice classification system

Trade mark registration involves 35 cover goods and 10 cover services. 

For example, a UK trade mark in Class 1 covers “Chemicals used in industry, science and photography…” whereas Class 43 covers "Services for providing Food and Drink; temporary accommodation; restaurant, bar and catering services…” 

Because of this, it may not be trade mark infringement to use an identical or similar sign/mark within a different classification. (Though this can still be trademark infringement, and best avoided). When it comes to trademark infringement, each of the above basic attributes of trademarks come into play.

There are also enhanced rights which belong to really well-known brands such as Coke Cola, so even though you make a T-shirt with a well-known logo on it, you can fall foul of trade mark laws! Trade mark registration is important for most big businesses. Infringing goods can seriously harm businesses and a likelihood of confusion is almost certain to attract adverse attention to the brand.

 

 

Trade Mark Owners: How does Trade mark Infringement Arise?

When a company has successfully registered a trade mark, it is entitled to enforce its statutory monopoly over its use where ever it has protection.

Once a company becomes aware that another entity is infringing its trade mark, it has statutory and common law rights which it may wish to pursue to stop the alleged infringement of its mark.  These can involve sending a cease-and-desist letter and then possibly issuing proceedings. If you become aware of your trade mark being infringed by another company then you must take action or your trade mark can be rendered invalid. Making sure your trade marks are not infringed is vital in business.

Depending on the nature of the infringement, the company may do so for the use of:

  • an identical mark for identical goods

  • a similar mark for identical goods

  • a similar mark for similar goods

  • an identical mark for dissimilar goods or services

  • So an identical or similar mark may be infringing mark!

There are a number of other factors that may come into play. For example, if the trade mark in question is of a very significant reputation, it may even be enforced for trade mark infringement in classifications that it is not registered in. For instance, a trade mark infringement claim would likely follow from a business using the Apple® logo under legal services – even though the Apple® logo is probably not a registered trade mark in Class 45. These are so called famous marks.

In many cases, identical or highly similar marks can coexist in different classifications, or jurisdictions. But there is always a risk, especially where bigger companies, who regularly enforce their rights, are concerned. Big companies and especially American companies can and regularly do take action for trade mark infringement and there are many trade mark infringement proceedings launched by bigger companies who try to stop new products from getting too close to their trade mark. It is for this reason that it is always worthwhile having professional trade mark searches done and also looking at things such as social media presence and Google searches. Failure to do trade mark clearance searches often leads to a trademark infringement claim. Trade mark infringement proceedings can be costly and time consuming.

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. For this reason, if you are looking to launch a brand, product or service in multiple countries (or classifications) you must seek specialist guidance and full clearance for use before an application is made. Trade mark infringement is expensive and avoidable! Also failure to get proper advice can mean that trade mark owners claim that you are taking unfair advantage of a mark.

Need assistance with clearing a brand? Or are you a trade mark owner considering claiming trade mark infringement of your mark? Get in touch with our team of trade mark specialists by clicking the button below.

 

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What Happens When a Business is Accused of Trade Mark Infringement?

When a business believes it's the victim of trade mark infringement, it will likely seek to stop infringement continuing as soon as possible. Failure to act against trade mark infringement can cost more than lost revenue.

Steps That Are Likely To Occur

These can differ within jurisdictions, but in the UK, they will likely follow the path below:

  • The Claimant becomes aware of possible trade mark infringement.

  • The Claimant notifies their solicitor or intellectual property (IP) specialist to review their suspicion **

  • The legal representative contacts the alleged infringer with a "letter before action" setting out how the trade mark infringement has arisen and what actions that need to be completed to stop a legal claim for trade mark infringement and damages being issued – with a clear deadline.

    • (this might include immediately stopping the use of the trade mark, destruction or transfer of products utilising the trade mark, damages, and profits – amongst other things set out by the Claimant)

  • Should the “undertakings” above not be fulfilled – it is likely that the Claimant's solicitor will begin legal proceedings for trade mark infringement to enforce their claim in the relevant Court system. In the UK there are specialist courts for trade mark infringement claims. These Courts include the High Court Chancery Division and the intellectual property enterprise court.

  • Trademark infringement proceedings can include injunctive relief, wherein a Judge can order the alleged infringer to stop the use of the alleged infringing goods on either an interim basis – or until a trial where trade mark infringement has been determined or not. In the case of an injunction at the end of a trial this may well be a permanent injunction.

  • Note it is always possible to use alternative dispute resolution to achieve a settlement.

  • It may be possible to solve this using co existence agreement.

  • In some instances there can be criminal offences arise as trade mark registration confers significant rights for UK trade mark owners.

** Note:

It is important to note that within the trademarks statute there is a provision against “unjustified threats” which is a countenance to incorrect claims being made against alleged infringers. In essence, if an incorrect claim or threat is made, the Defendant may be able to counterclaim.

Before contacting the other side and threatening legal action it is always important to 1. collect evidence of the alleged infringement and 2. contact a specialist solicitor to review whether a trade mark infringement claim can be made. Incorrect claims may result in “groundless threats” being cited and a damages and costs award being granted against the Claimant. Trade mark registration is an important right.

Whether you suspect someone is infringing your trade mark, or you have received notice that you are alleged to have infringed someone else's it is very important that you contact a solicitor (ideally, a specialist) to identify the facts of the matter and the severity and veracity of the claim.

Not doing so or ignoring the issue can result in great commercial harm and cost in the longer term. Trade mark infringement claims are complex and are normally handled by specialist solicitors, barristers and judges.

Do you need assistance with a trade mark infringement claim? Get in touch with our team by clicking the button below.

 

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Examples of Trade Mark Infringement under UK Law

To best understand trade mark infringement, it is a good idea to look at some theoretical examples of how it might happen in the real world.

Hypothetical Examples of Potential Trade Mark Infringements

We've constructed some hypothetical examples that illustrate how trade mark infringement works in the UK.

 

How to relist your brand on Amazon?

 

Example 1: “The Amazon Book Shop” – Identical Mark, Identical Goods

  • A local book shop run by Steve and Mark which has operated locally in London for 25 years is going through a re-branding exercise. 

  • The owners, having been inspired by a recent trip to Brazil, decide to change the name of their shop to “The Amazon Book Shop”. 

  • They will also begin to sell their books online. Steve and Mark spend several thousand pounds on new signs, promotions, website changes and a new logo. 

  • Steve and Mark pay their designer to make sure that the new logo looks different from Amazon the online store. 

  • Within a month, Steve and Mark a letter before action from Amazon's solicitors saying that they have to change their name back and pay Amazon money for what they made whilst the shop was called “Amazon”. Amazon says this is because by using their registered trade mark for the word “amazon” to sell books online – the buying public would be confused and think that Steve and Mark's book shop is related to them. These would be infringing acts under section 10(1) of the Trade Mark Act 1994.

 

Image of hundreds of apples

 

Example 2 – Food – Identical Mark, Similar Goods

  • A fresh food producer has recently secured a contract with supermarkets across the United Kingdom. 

  • This will see their farm produce enter the market at a national level. 

  • Previously, the fresh food producer has not sold to consumers but instead produced for other companies. As such, their new products need branding and packaging. The producer decides upon the name “McDonald's Farm Foods”. 

  • This is because he sees that no one else is using the name on the supermarket shelf. After the big release of his new range, the producer receives notification from McDonald's fast-food restaurants in relation to infringement of their trade mark. 

  • Whilst McDonald's notes that their fast food is completely different from the fresh food producer's fruit and vegetables – they say it is similar and can result in the buying public being confused. These would be infringing acts under s10(2) of the Trade Marks Act 1994

 

Restaurants

Example 3 – Restaurants – Similar Mark, Identical Goods

  • A new pizza restaurant is opening up in three city centres. 

  • It is going to focus on offering a range of different pizzas and a contemporary service. 

  • It will be family-friendly but also offer a selection of craft ales and table tennis tables to differentiate itself from its competitors The owners of the new chain have a deep sense of irony and have decided to choose a name that is tongue-in-cheek – and pokes fun at their competition. 

  • They have decided to call their restaurants “The Pizza Shack”. 

  • Within weeks and after the word gets around about the new restaurant concept, Pizza Hut's in-house legal team decides that it is too similar to their trade mark. 

  • They issue a letter before action for trade mark infringement to the new restaurant's owners – asking them to change the name and pay an account of lost profits. These would be infringing acts under s10(2) of the Trade Mark Act 1994.

 

Lego Blocks

Example 4 – “Lego” Cleaning Products – Identical Mark, Dissimilar Goods

  • A manufacturer of bathroom cleaning products completes the creation of a range of new innovative products. 

  • These products are going to be aimed at the younger market which over the coming years will become the main demographic for the company. 

  • The company is focusing in particular on the trend around cleaning up, tidiness and wellness. The new brand will focus on the proactive feeling around cleaning up, rather than its practical benefit. After much back and forth, the branding teams come up with “Lego” – as in “Let's Go” and create the packaging around this idea. 

  • The team do not anticipate any problems from the toy company “Lego” as their products are completely different from what Lego sell.

  • The products are released nationwide and become very popular through influencer campaigns and viral marketing. 

  • Soon the company receive a letter for trade mark infringement from Lego's solicitors saying that they cannot use the word “Lego” to promote their goods, even though they are totally different. 

  • This is because they say that even though the products are completely different, they believe that it can be proven that there is a high likelihood that the general public would be confused because of how famous the Lego toy trademark is. These would be infringing acts under s10(3) of the Trade Marks Act 1994.

  • The company then have to recall all of its stock and destroy it.

Real-Life Examples of UK Trade Mark Infringement Claims

Actual (‘real-life’) trade mark infringement claims have involved:

  • Cadbury vs Nestle.

  • Specsavers vs Asda 

  • L'Oreal vs Bellure

What To Do When Trade Mark Infringement Occurs

If you believe that your trade mark is being infringed it is important that you act both decisively and carefully. Most importantly, you should not notify the person that you think is infringing your trademark until you are sure of the facts. Trade mark infringement claim are a complex area of law and need a specialist IP litigation solicitor to provide advice.

Making a false claim for trade mark infringement can be a bad idea and result in a counterclaim under the statute of “groundless threats.”

To do so it is first important to collect as much evidence of trade mark infringement as possible. Then, contact a specialist intellectual property solicitor who will look at the evidence you have, and help you identify more you can uncover to establish the extent to which you are correct. 

Following this, your solicitor will advise upon your next best steps, whether it's pre-action correspondence or something more substantive. More heavy weight action for trademark infringement could include asking the Court for an interim injunction to stop damage being done to the brand.

They will also be able to help identify the amount of damages/profits that you can seek to claim back from the alleged infringer – if the claim is valid. They will also be able to help you stop trade mark infringement for goods sold online and also from being imported.

Do you suspect that someone is infringing your trade mark? If you need help, contact our team by clicking the button below to be taken to our contact form. 

Our team will help assess the claim and provide an outline of your best options.

 

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What To Do When You're Accused of Trade Mark Infringement

As above, it is important to make sure that when you are notified of alleged infringement you do not act hastily. Firstly you need to consider whether there are truly identical or similar goods. Does this activity takes unfair advantage of goods or services with trademark protection? Are you an unauthorised third party? Is there a likelihood of confusion? Sometimes this is called IP infringement. Are you supplying services and is there consumer confusion?

Seek Professional Legal Advice

In many instances, claims for trade mark infringement are made can be done so on shaky ground. Often this is inadvertently done by non specialist lawyers. The claim may even be a “groundless threat” and potentially issue a counterclaim. We frequently see letters before action which are just misconceived and attempts to protect brands which are quite different from the ones cited in a letter. If court proceedings are threatened then you must get legal advice.

In addition to this, the things that the Claimant asks you to do in their correspondence may be negotiable or (in some cases) over the top. By way of example the damages and legal costs may well be inflated or simply incorrect.

As such, a review might find that you are liable for much less than you're being asked for, or nothing at all.

Be wary, however, of any deadlines that are mentioned in the letter because if the letter is of merit – these will have important consequences if they lapse before you formally reply.

Speaking to specialist intellectual property solicitor about trade mark infringement as soon as possible will help you identify the seriousness of the claim made against you, the proportionate response to the issue and the best next steps. A specialist solicitor will also be able to hep you identify an common law tort.

Have you been accused of trade mark infringement? If you need to speak to a specialist, you can contact our team to access the claim being made and outline options about how we can help.

Click the button below to be taken to our contact form to leave our team a message and arrange a call back.

 

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Conclusion - Trade Mark Infringement

In conclusion, trade mark infringement proceedings are some of the most critical examples of intellectual property enforcement. With brands being as important as they are to businesses (whether they cover company names or those of products or services).

If you are a trademark owner it is critical to make sure that those that are used and registered are:

  • fit for purpose.

  • of distinctive character.

  • not likely to result in proceedings from others.

  • and, enforceable if someone else begins to use something like it themselves. Enforceability of trade marks is often a problem where the original mark has not been professionally registered trade mark company.

Whether you are a trademark owner or not when in doubt, contact an intellectual property specialist solicitor to find out more.

Doing so ahead of time is much more cost and time effective that dealing with a claim after the fact.

If you have any issues with trademark infringement, then get in touch by clicking the button below.

 

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.

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 waive 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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