Trade Mark Infringement
Trade Mark Infringement – The Grounds
A UK trade mark registration is infringed by the 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.
Where an identical trade mark is used in relation to identical goods or services to those registered, the Claimant does not have to demonstrate that a likelihood of confusion exists or is likely. However, where a similar trade mark is used in relation to identical or similar goods or services to those registered, the Claimant is required to demonstrate that a likelihood of confusion exists or is likely. If you become aware of consumer confusion arising between your trade mark and another trade mark, detailed records should be kept, if legal proceedings follow.
In addition, a UK trade mark registration may be infringed by use of an identical or confusingly similar trade mark, such that it damages or takes unfair advantage of the reputation of the earlier trade mark. In some circumstances, this extends to use of a conflicting trade mark in relation to dissimilar goods or services.
The grounds of trade mark infringement are broad and it is important that trade mark owners police their rights diligently and act promptly, if trade mark infringement situations arise.
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.
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 counterclaims that the Defendant might 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 or trade mark registrations relied on 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 damages and/or legal costs.
A “Letter Before Action” must be carefully drafted so as not to make unjustified threats of trade mark infringement. Such threats are actionable if the Defendant can show that losses have been suffered as a result. There are exceptions and no right of action exists where the alleged trade mark infringement involves the application of the trade mark to goods or their packaging, the importation of goods bearing the trade mark (or which has been affixed to their packaging) and the supply of services under the trade mark.
In most cases, a well drafted Letter Before Action instigates 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, when the matter can be 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 defences to trade mark infringement and the trade mark attorneys at Albright IP are experienced in representing parties facing challenge and trying to defend their position and mitigate costs and uncertainty. For example, a UK trade mark registration is not infringed by the use of another registered trade mark, the use of your own name, descriptive use or of a prior local right.
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. The trade mark attorneys at Albright IP are experienced in conducting trade mark searches and can advise you on an individual basis. Trade mark searches can be undertaken for identical and/or similar trade marks in jurisdictions around the world.
In addition to searches for registered trade marks, you should also investigate use of identical or similar trade marks on an unregistered basis. 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 wise to research unregistered rights on the Internet, in industry publications and the like.
Another indication that a trade mark is registered is use of the ® symbol. Correctly used, this symbol is a powerful deterrent and indeed, it is a criminal offence to use it if the trade mark in question is not a registered trade mark.
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.