What is trademark infringement, you ask? Here's everything you need to know.
What is a trademark?
To understand trademark infringement it is first important to understand what trademarks are and how they work.
Trademarks ("trade mark" being the UK spelling) tell people:
- Where marked goods or services have come from (i.e. as a "designation of origin")
- The quality expected of the goods and services
- That these goods and services are not made by competitors or that they originate from unofficial sources
An example of how trademarks work: Nike
For example; a pair of Nike trainers likely include a “swoosh”/”tick” mark on their design. This expresses to the buying public that:
- the shoes are made by Nike and do not originate from a competitor, for example
- the product would be of a quality expected of Nike as a result of their reputation and previous products
- 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. 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.
Trademarks are registered rights, that businesses apply for, and that provide legal protection for signs or marks like these.
In many countries, there are ways to enforce rights over unregistered trademarks. But these are typically more expensive, time-consuming and onerous to enforce.
It is important, however, to avoid risking infringing any business’ trademarks (registered or unregistered) where possible.
What Kinds of TradeMarks Are There?
There are many different types of trademarks 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, as well as the names of individual products and services they provide.
Types of trademarks
- 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. Trademark infringement can occur when any of these types of registered trademarks (or those which are similar enough) have been used without the permission of the trademark owner.
How do TradeMarks Work?
For beginners, there are three main things that you need to know about trademarks:
- They are monopoly rights
Registered trademarks are known as a “monopoly” right. This is because they effectively grant the trademark 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. Trademarks can also be renewed in perpetuity (typically every 10 years). This means that as long as they are continually renewed, their protection can last forever (unlike copyright and patents, for example).
- They are jurisdiction-based rights
A trademark registered in the United Kingdom protects the use of the mark in the United Kingdom alone. As such, 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 open a chain called “Hunter’s Steakhouses”. Because of this, it is very important to take jurisdiction into account when you seek to register a trademark or sell products and services internationally. It is also important to note that trademark laws can differ a lot in different jurisdictions.
- They are classification-based rights
When registering a trademark you register the mark within a (or number of) certain classifications. There are 45 different classes in the Nice classification system. 32 cover goods and 13 cover services. For example, 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 trademark 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 comes into play.
How does TradeMark Infringement Occur?
When a company has successfully registered a trademark, they are entitled to enforce its monopoly over its use.
Once a company becomes aware that another entity is infringing its trademark, it may issue proceedings.
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 identical goods
- an identical mark for dissimilar goods
There are a number of other factors that may come into play.
For example, if the trademark in question is of a very significant reputation, it may be enforced in classifications that it is not registered. For instance, a trademark infringement suit would likely follow from a business using the Apple logo under legal services – even though the Apple logo is probably not a registered EU trademark in Class 45.
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.
As such it is very important to make sure that new trademarks, brands, products and services are not at risk of allegations of trademark infringement. For this reason, if you are looking to launch a brand, product or service in multiple countries (or classifications) it is recommended that you seek specialist guidance and full clearance for use before an application is made.
Need assistance with clearing a brand? Get in touch with our team of trademark specialists by clicking the button below.
What Happens When a Business is Accused of Trademark Infringement?
When a business believes it’s the victim of trademark infringement, it will likely seek to stop infringement continuing as soon as possible.
The steps that are likely to occur. in UK law, are as follows:
- The Claimant becomes aware of possible trademark 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 certain actions that need to be completed to stop a legal claim being issued – with a clear deadline.
- This might include immediately stopping the use of the trademark, destruction or transfer of products utilizing the trademark (e.g. if the infringement was online), 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 to enforce their claim in the relevant Court system.
- Legal 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 infringement has been determined or not.
*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 it is always important to 1. collect evidence of the alleged infringement and 2. contact a specialist solicitor to review whether a trademark 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.
Whether you suspect someone is infringing your trademark, 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.
Do you need assistance with a trademark infringement claim? Get in touch with our team by clicking the button below.
Examples of TradeMark Infringement
To best understand trademark infringement, it is a good idea to look at some theoretical examples of how it might happen in the real world.
Trademark Infringement 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 trademark 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.
Trademark Infringement Example Number #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 trademark. 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.
Trademark Infringement Example Number #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 trademark. They issue a letter before action to the new restaurant’s owners – asking them to change the name, and pay an account of lost profits.
Trademark Infringement Example Number #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 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. The company then have to recall all of its stock and destroy it.
What to Do When You Think Your TradeMark is Being Infringed
If you believe that your trademark 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. Making a false claim 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 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. 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.
Do you suspect that someone is infringing your trademark? 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.
What to do When You’re Accused of TradeMark Infringement
As above, it is important to make sure that when you are notified of alleged infringement you do not act hastily.
In many instances, claims that are made can be done so on shaky ground. The claim may even be a “groundless threat” and potentially issue a counterclaim. 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. 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 an intellectual property solicitor 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.
Have you been accused of trademark 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.
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Conclusion - Trademark Infringement
In conclusion, trademark 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).
It is critical to make sure that those that are used and registered are:
- fit for purpose;
- not likely to result in proceedings from others;
- and, enforceable if someone else begins to use something like it themselves
When in doubt, contact a solicitor (preferably an intellectual property specialist) 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.
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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.