Trade Mark Infringement: an Introduction
Trade mark infringement occurs when someone uses a trade mark without permission.
In commerce, businesses affix signs or “marks” to their goods and services to communicate two things to the public.
Marks tell people:
1) where marked goods or services have come from,
2) the quality expected of the goods and services,
2) that these goods and services are not made by competitors or that they originate from unofficial sources
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. Further to this, it would express to the public that the product would be of a quality expected of Nike as a result of their reputation and previous products. It would also express that the shoes were not produced by competitors or that they originate from adidas or other sources. It is important for Nike to be able to use this mark, and to stop others from using it in order to protect their ability to distinguish their shoes from others in the market, to the buying public.
Trade marks are registered rights which protect these signs or marks – helping businesses stop others from using them.
In many countries there are ways to enforce rights over unregistered trade marks. But these are typically more expensive, time consuming and onerous to enforce.
It is important, however, to avoid risking infringing any business’ trade marks (registered or unregistered) where possible.
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 trade mark their company name, but they may also trade mark the names of individual products and services they provide.
Today, trade marks registered in the UK and EU can include:
- Word marks
- Figurative marks
- Shape marks
- Position marks
- Pattern marks
- Colour (single) marks
- Colour (combination) marks
- Sound marks
- Motion marks
- Multimedia marks
- Hologram marks
Trade mark infringement can occur when any of these registered types of trade mark (or those which are similar enough) have been used without the permission of the trade mark owner.
How do Trade Marks Work?
For beginners, there are three main things that you need to know about trade marks.
1. They are monopoly rights
Registered trade marks are known as a “monopoly” right. This is because they effectively grant the trade mark holder a monopoly over use of that mark – with no one else being allowed to use it without permission of the rights holder. Trade marks can also be renewed in perpetuity. This means that aslong as they are continually renewed their protection can last forever (unlike copyright and patents, for example).
2. They are jurisdiction-based rights
A trade mark registered in the United Kingdom protects 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 trade mark or sell products and services internationally.
It is also important to note that trade mark laws can differ a lot in different jurisdictions.
3. 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. 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 accomodation; 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 it is possibly still trade mark infringement and best avoided).
When it comes to trade mark infringement, each of the above basic attributes of trade marks come into play.
How does Trade Mark Infringement Occur?
When a company has successfully registered a trade mark, they are entitled to enforce their monopoly over it’s use.
Once a company becomes aware that another is infringing their trade mark, they 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 trade mark in question is of a very high reputation, it may be enforced in classifications that it is not registered in. A trade mark infringement suit would likely follow from a business using the Apple logo under legal services – even though the Apple logo is not a registered EU trade mark in Class 45.
In many cases identical or highly similar marks can coexist in different classifications; or jurisdictions.
But there is always risk, especially where bigger companies who regularly enforce their rights are concerned.
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) it is recommended that you seek specialist guidance.
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 this occurring as soon as possible.
The steps that are likely to occur. in UK law, are as follows:
- 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 certain actions that need to be completed to stop a legal claim being issued – with a clear deadline.
- This might include immediately stopping use of the trade mark, destruction or transfer of products utilizing the trade mark (e.g. if the infringement was online), damages, 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 proper to enforce their claim.
- Legal proceedings can include injuctive 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 trial where infringement has been determined or not.
*Within the trade marks statute there is a provision against “groundless threats” which is a countenance to incorrect claims being made against alleged infringers.
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 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.
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.
Not doing so, or ignoring the issue can result in great commercial harm and cost in the longer-term.
Examples of Trade Mark Infringement
To best understand trade mark infringement, it is a good idea to look at some examples of how it might happen in the real world.
Example Number #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 being 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, promotion, 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 the what they made whilst the shop was called “Amazon”.
Amazon say 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.
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 into 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 note 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.
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 the restaurants “The Pizza Shack”.
Within weeks and after the word gets around about the new restaurant concept, and Pizza Hut’s in-house legal team decide that it is too similar to their trade mark. 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.
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.
The company then have to recall all of their stock and destroy it.
What to Do When You Think Your Trade Mark is Being Infringed
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 trade mark 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.
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, that you do not act hastily.
In many instances, claims that are made can be done 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 ask you to do in their correspondence may be negotiable or (in some cases) over-zealous. 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 prior to 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 issue and the best next steps.
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) – it is critical to make sure that those which 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.
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