Trade Mark Infringement
Trade Mark Infringement – The Grounds
A UK Trade Mark Registration is infringed by the unauthorised use of an identical or confusingly similar Trade Mark, in relation to identical or similar goods or services to those covered by the Trade Mark Registration.
A UK Trade Mark is infringed if one of the following circumstances apply:
- Where an unauthorised third party uses a Mark that is identical to a registered Trade Mark in relation to identical goods and services. For the purposes of Trade Mark infringement, a Mark will be considered identical, even if minor modifications have been made, since changes would go unnoticed by the average consumer.
- Where an unauthorised third party uses an identical registered Trade Mark on similar goods and services, or a similar Trade Mark on identical goods and services, so as to create a likelihood of confusion as to the origin of the goods or services, and/or an association being made between the two Trade Marks.
- Where an unauthorised third party uses an identical or similar Trade Mark on goods or services which are not similar, such that it damages or takes unfair advantage of the reputation of the earlier Trade Mark.
The grounds of Trade Mark infringement are broad, and it is important for Trade Mark owners to police their rights diligently. If a Trade Mark infringement situation arises, action should be taken promptly.
How is a UK Trade Mark registration infringed?
In order to infringe a UK Trade Mark registration under the grounds discussed above, the Defendant must use their Trade Mark in the course of trade. Such infringing acts include:
- Affixing the Trade Mark to goods, or their packaging;
- Offering goods for sale, or supplying services under the Trade Mark;
- Importing or exporting goods under the Trade Mark;
- Using the Trade Mark on promotional material, or in advertising.
Importantly, if a registered Trade Mark relied upon in an infringement action has not been used within five years of being put on the Register, this could expose Claimants to the risk of a counter attack.
A request for “proof of use” can be demanded during infringement proceedings, and, if no evidence is submitted, or if the evidence submitted is considered insufficient, the Trade Mark(s) in question could be removed entirely, or in part, from the Trade Mark Register. This effectively eliminates any registered rights that a Claimant may have been able to rely upon.
Trade Mark owners are accordingly advised to actively use their Marks, in order to maintain their validity and their ability to be enforced against third parties, and to collate and maintain a record of such use.
What should I do if I become aware of a third party infringing my trade mark?
If you are concerned that your UK Trade Mark Registration is being infringed, it is important to seek prompt legal advice from a Trade Mark Attorney, knowledgeable in Trade Mark infringement proceedings. The Trade Mark Attorneys at Albright IP are experienced in enforcing Trade Mark Registrations, and defending against claims of Trade Mark infringement. The facts of every case are different, and it is vital to consider all avenues available, including any counterclaims that the Defendant might seek to pursue, to try and defeat the Trade Mark infringement claim.
In most cases, the first step is to write a “Letter Before Action” to the infringing party, putting them on notice of the Trade Mark Registration(s) relied upon, identifying the acts complained of, and insisting that use of the infringing Trade Mark is ceased. This letter can be accompanied by a legally binding undertaking, which sets out the Defendant’s obligations not to commit further infringing acts in the future. In addition, the Claimant can request delivery up of the infringing goods, details of customers, and the payment of reasonable damages and/or legal costs.
The downside of claiming Trade Mark infringement is the possibility of a groundless threats claim. A “Letter Before Action” must be carefully drafted so that any reference to Trade Mark infringement will fall within the legal exceptions to groundless threats. Claimants should always ensure they are specific about what use is infringing, so as not make an overly broad claim for Trade Mark infringement. Seeking professional legal advice is therefore always recommended.
In most cases, a well drafted Letter Before Action instigates a communication between the parties, and, where possible, an amicable resolution should be achieved. It is in neither parties’ commercial interests to unnecessarily embark upon protracted and costly Trade Mark infringement proceedings, where the matter can be pragmatically resolved. For example, a licence arrangement could be instigated, or, if applicable, a coexistence agreement.
I have received a Letter Before Action, what should I do?
There are several statutory defences to Trade Mark infringement, and the Trade Mark Attorneys at Albright IP are experienced in representing parties facing challenge. Trade Mark infringement proceedings are often complex, and are must be dealt with on a fact specific basis. Depending on the factual circumstances, Defendants may be able to defend their position, and mitigate against any costs and uncertainty.
How do I try and and avoid becoming embroiled in trade mark infringement proceedings in the first place?
Prior to selecting a new Trade Mark, it is important to conduct Trade Mark searches, to explore whether your proposed Trade Mark might infringe existing third party rights. Trade Mark searches can be undertaken for identical and/or similar Trade Marks, in jurisdictions around the world. The Trade Mark Attorneys at Albright IP are experienced in conducting Trade Mark searches, and can advise you on an individual basis.
In addition to searches for registered Trade Marks, unregistered use of identical or similar Trade Marks should also be investigated. If a Trade Mark is used on a fairly extensive scale, this can give rise to rights under the common law tort of Passing Off.
It is always wise to conduct internet searches, checks of the relevant marketplace, social media and alike, to ensure that no other party is using an identical or similar Mark for the relevant goods or services. If so, it is possible that you may become involved in a conflict situation, and have enforceable rights, whether registered or unregistered, asserted against you.
If you are concerned that a third party is infringing your Trade Mark Registration, or that you might be at risk of infringing someone else’s rights, please contact the Trade Mark Attorneys at Albright IP.