What constitutes infringement of a trade mark?

Concerned that you may be infringing the rights of a trade mark owner?

Regardless of whether you’re trying to avoid infringement of trade mark yourself or believe that another party is using your trade mark without permission, we can help.

Here at Trademark Eagle, we can provide you with the swift professional guidance required to help prevent damage to your brand’s hard-earned reputation and protect your valued customers and your revenue.

Below, we explore what constitutes trade mark infringement by providing you with a selection of examples and a clear definition.

On top of explaining the meaning of trade mark infringement, we’ve also created a list of steps you can take to avoid unintentionally infringing upon the trade mark rights of another individual or company.

What is trade mark infringement?

Trade mark infringement refers to the violation of an individual’s or company’s exclusive rights to use a trade mark. Any unauthorised use of registered a trade mark can result in a claim that infringement has taken place.

The trade mark owner can also give their authorisation for another party to have limited or specific use of the trade mark, if desired, which is often set out by way of a licence.

However, the third-party must follow the specific terms and conditions attached to having permission to use the trade mark if they want to avoid unintentional infringement of the trade mark.

If you’d like to learn more about trade mark infringement, please don’t hesitate to contact our expert team.

What are some examples of trade mark infringement?

Still unsure what exact actions constitute infringement of trade mark?

Some instances of trade mark infringement are clear, especially in circumstances where a competitor starts selling products or services under the exact brand or name of a company that’s already been trademarked.

Other instances, however, can be a little less straightforward. To help you understand the various ways that these important rights can be violated, we explore some of the more common examples of trade mark infringement below.

Intentional trade mark infringement

One of the most well-known examples of trade mark infringement is where an unauthorised third-party online retailer uses similar branding to a well-established, popular brand (like Nike, Apple, Adidas, or Disney). The intention of the seller is to deceive customers and pass themselves off as either being the brand or being associated with this brand, resulting in sales of the goods to the infringer.

By intentionally using similar or even identical branding (which could be a similar logo, colours, or tagline), consumers might believe that they are purchasing products or services either directly from the established brand itself or an authorised reseller.

In many cases, the goods being sold by the unauthorised third-party online retailer are sub-par to those that the consumer might expect to receive from the trade mark owner, thereby directly impacting the reputation of the original brand.

Unintentional trade mark infringement

Unlike the above instance of trade mark infringement that is purposefully designed to mislead customers and allows the third-party to benefit from the good reputation of the original brand, infringement of trade mark can also be unintentional.

An unintentional example of trade mark infringement could be caused by something as simple as failing to conduct an appropriate clearance search. As a result, you might unintentionally choose a business or brand name that shares a significant similarity with a competitor or another business.

While the intention of choosing this name may not be to deceive customers, it could still cause consumer confusion, especially if the two companies are involved in the same or similar industries. In the trade mark world, this is known as likelihood of confusion.

While there’s no set rule for determining what is or isn’t likely to be confused with another product, service, or business and what isn’t, a number of factors will often be taken into consideration. This includes how distinctive the name is (in terms of the wording, sound, and appearance) as well as the similarity of the products and services.

For example, if you’re selling foodstuffs under a name similar to another business that sells furniture, it’s unlikely that a consumer would confuse the two. However, the proximity of each business location and the similarity of company names could contribute to the likelihood of confusion, so it’s worth analysing each potential case of trade mark infringement on a case-by-case basis.

What are the effects of trade mark infringement?

There are many ways that infringement of trade mark can harm your company, with some of the biggest impacts being the effect it can have on your reputation, credibility, and the willingness of your customers to continue purchasing your goods or services.

Loss of credibility

If a third-party is infringing upon your trade mark and passing themselves off as an authorised retailer for your products or services, your credibility could be brought into question. Every business wants to be seen as trustworthy by their customers which means they’re transparent with their customers and take accountability.

If you don’t take action to prevent infringement of trade mark by these third-party competitors, you could lose all credibility as you’re demonstrating that you don’t have your customer’s best interests at heart.

Reputational damage

Unfortunately, building a strong reputation often takes a substantial amount of time, money, and effort, but having this positive reputation damaged by infringement of trade mark can take mere moments.

Similar to how a business can lose credibility following trade mark infringement, they can also suffer irreparable reputational damage. Regardless of whether consumers have received poor customer service or sub-par products from a third-party competitor infringing upon your trade mark, they could still blame your business.

A disgruntled customer that’s had a bad experience with the third-party infringing upon your trade mark could end up leaving your business with a negative public review, taking up your valuable time by contacting your customer service team, or even visiting your business premises to complain.

Decrease in revenue

Following this loss of credibility and damaged reputation, your customers could start to feel frustrated and misled. This could then affect their desire to purchase your products or services in the future and subsequently impact your revenue intake.

Loss of revenue arising from people inadvertently purchasing from an infringer will also impact on and damage your business.

Depending on the extent of the trade mark infringement, you could face long-term economic and financial damages. If you believe infringement of trade mark is having this much of an impact on your business, you should always seek professional legal advice.

An experienced chartered trade mark attorney can offer support in the form of cease-and-desist letters, expert advice, or even formal legal proceedings. They will advise on the best ways to prevent the infringement on a case by case basis.

How to avoid trade mark infringement

If you want to avoid infringement of a trade mark and the potentially harmful effects and intimidating legal action that can follow, there are some key steps you can take.

From doing your due diligence market research to carrying out essential trade mark searches, we explain each crucial step in more detail below.

Research trade mark law

Understanding what’s considered trade mark infringement (and what isn’t!) is the first step to avoiding any costly and time-consuming legal proceedings. You can learn more about trade mark law in the UK by either reading the Trade Marks Act 1994 or making use of other relevant reading materials.

If you’re struggling to do your own research or want expert advice as soon as possible, we recommend enlisting professional help from an experienced trade mark attorney.

To find out how the Trademark Eagle team can help you to avoid infringement of trade mark, get in touch today.

Carry out online searches

In some cases, your competitors may not have registered their trade mark. While you won’t have to worry about infringing on their registered trade mark, unregistered trade marks are actually protected by the common law of passing off in the UK and you can equally fall foul of this.

Passing off refers to an individual or business trying to represent the goods or services of another party as their own. While you may not be intentionally trying to pass yourself off as another business, you may not be aware of their market presence if you only search for registered trade marks.

Carrying out an initial online search for other businesses is therefore essential if you want to avoid potentially infringing on someone’s unregistered trade mark.

Conduct a trade mark search

Once you’ve ensured that your desired trade mark isn’t being used by in an unregistered capacity by another company, you can conduct a trade mark search. You can do this using the government site to help check whether the trade mark you want to register already exists under another brand in the UK.

You can also explore more recent trade mark applications before they’ve been accepted by checking the Intellectual Property’s Office (IPO’s) online trade marks journal. As well as avoiding very close matches, should also try to stay away from similar trade marks that could cause consumer confusion.

Register your trade mark

After carrying out your due diligence market searches, doing your trade mark law research, and conducting those essential trade mark searches, you should try to secure your brand as soon as possible by registering your trade mark.

You can submit a trade mark application either online or by post to the IPO. Registering a trade mark will cost at least £170, but can cost more depending on your products (such as how many types of product or services you want to protect). One registered, this protection will last for ten years, but should be renewed after this period if you want to retain your exclusive rights.

With your registered trade mark, you’ll be able to take legal action if someone uses it without permission You should claim your registered trade mark by putting the ‘®’ symbol next to your brand to highlight that it’s registered.

Monitor new trade mark applications

While it’s important to avoid infringing upon trade marks that already exist, it’s just as important to keep an eye on new trade mark applications that could pose a threat to your business. This is because every trade mark owner is responsible for ensuring no one else is using or applying to register their trade mark. The Registry cannot refuse a trade mark based purely on an earlier similar trade mark – unless the owner of the earlier mark formally objects.

Identifying potential trade mark infringements at this early stage is vital if you want to take prompt action and reduce potential damage to your business. You can do this yourself by routinely checking the Intellectual Property’s Office (IPO’s) online trade marks journal.

Alternatively, you can also reach out to an experienced trade mark attorney for professional support with monitoring similar trade marks and enforcing your rights. At Trademark Eagle, we provide a trade mark monitoring service that ensures you’re swiftly notified regarding any competing trade mark applications.

Seeking expert trade mark support?

Navigating the complex world of trade mark registration and intellectual property protection can feel impossible for those with little experience in this industry.

Fortunately, the professional team here at Trademark Eagle can help.

With a whole department of trade mark attorneys and experts dedicated to resolving infringement of trade mark disputes and enforcing the legal rights of our clients, we can help you to retain the value of your business-critical assets.

Regardless of whether the dispute can be resolved through negotiation or requires formal proceedings to reach an agreement, our team always aims for a swift and cost-effective resolution.

By analysing the specific strengths and weaknesses of each case, we can provide sound trade mark infringement advice.

If you’d like to learn more about our resolving infringement of trade mark dispute services, please don’t hesitate to give us a call today on 0122 3208 624. Alternatively, you can also get in touch using our convenient live chat feature, email, or by filling out our handy online contact form.

However you decide to contact our professional team about infringement of trade mark, we look forward to hearing from you soon.