What to do if someone uses your trade mark?

Someone is using my trade mark. Why is this a problem?

There are a number of reasons why you should be concerned about trade mark infringement. Find out why it could be of concern if someone is using your trademark below.

Financial

Businesses invest considerable resources to create a successful trade mark – in terms of money, time and creativity. They do this because the rewards can be so great. Anyone who uses your trade mark without your consent is freeloading – benefiting from your enterprise without making any commitment themselves – and diverting customers and profit away from you.

Reputational

One of the main functions of a trade mark is to inform consumers about the source of a product or service. It is also an indication of the product’s quality which customers expect to receive when purchasing. Should another organisation use your trade mark and provide something of relatively low quality, customers may think that you are the supplier and lower their opinion of you accordingly.

Even if consumers are aware that you are not the supplier, they may be unimpressed if they feel you are not taking sufficient steps to protect them by tackling the trade mark infringement.

Operational

Trade mark infringement can provide an unwelcome distraction from a company’s core activities as it is forced to devote resources to responding to complaints from customers who mistakenly believe it is responsible for the inferior goods and services and to address the damaging unauthorised use of their trademark.

What are the first steps to tackling trade mark infringement?

There are a number of measures a company can take to prevent unauthorised use from occurring – or to strengthen its position should infringement of its rights take place.

Register your trade mark

The Trade Marks Act 1994 provides strong legal protection in the UK – but the marks must be registered with the Intellectual Property Office to benefit from the protection a registered mark provides.

Make use of your trade mark

Should you not use your trade mark for five years after the date of registration (or for a subsequent continuous period of five years) a competitor may be able to have your mark cancelled  and adopt the same mark, or something similar to it. As well as ensuring you utilise the trade mark as registered, for all the goods and services for which it is registered, you should also keep meticulous records to help combat any attempts to have it revoked. Revisiting your rights and ensuring your trade marks are up to date in terms of the styles of marks protected and the products covered is an essential part of maintaining the investment made in your trade marks.

Renew your trade mark

Under UK law a trade mark must be renewed every ten years to remain valid (with a grace period of up to one year).

Can someone else trade mark my business name?

There are different rules concerning trade marks around the world and so it is important that you are aware of the situation in the jurisdictions in which you are operating. In the UK and EU, the Registry cannot refuse a trade mark application – it is up to the owners of earlier marks to take action to prevent use and registration of the same/similar brand. Therefore, monitoring new applications is essential so that you can take action to prevent registration and use of competing names.

Can someone trade mark my business name in the UK?

Quite simply the answer is yes. Anyone can file an application for a trade mark and it is up to the owners of earlier rights to ensure that competing trade marks are not registered. Therefore, registering your business name as a trade mark as soon as possible is highly recommended. If you have registered your business name then anyone using it without permission would be committing trade mark infringement – enabling you to take legal steps against them. In a case where you have not registered the name, however, the other business could potentially accuse you of infringement even if you have been using the name for longer. Companies in this situation are strongly advised to seek expert help as soon as possible.

Can two companies have the same name?

It is possible for two companies to have the same name without trade mark infringement having occurred. As an example, someone selling chemicals is unlikely to overlap with a company providing personal training services, even if they both use the same name. Where two companies that are supplying similar products but with a  different commercial focus, then they may reach an agreement that enables both to keep operating without confusion or damage.

What should I do if someone infringes my trade mark?

In view of the potentially serious consequences of trade mark infringement it is advisable to seek specialist advice. Trademark Eagle has a wealth of experience in this area and can advise you on the most effective and cost-efficient course of action.

What are the possible responses to trade mark infringement?

Agreement with the other company

Should the business using your trade mark be operating in a different sector you may agree (possibly with the help of negotiation or mediation) that it can continue using the name providing that it does not subsequently begin providing similar products and services to you.

Sometimes it is possible to licence your trade marks to someone else who has an interest in the name and this can be beneficial to both parties. Trademark Eagle have a lot of experience advising on and drafting licences.

Cease and desist letter

This is a formal document sent to the transgressor which explains your legal rights in the trade mark and the way in which they are infringing it. A cease and desist letter will often result in the business agreeing to stop its encroachment or to limit its activities so there is no commercial overlap. Should it be necessary to take the matter to court, or to object to a trade mark application then it is important to have made efforts to try and resolve the matter beforehand to comply with the pre-action protocols and taking sound legal advice is important. The majority of disputes will settle amicably without the need for court action.

Interim injunction

If there is real damage to a trade mark, or the likelihood this will occur then one recourse to prevent such damage is to consider an interim injunction which would stop the use of the infringing trade mark whilst the matter is scheduled for a court hearing. This is often a costly action and the company filing for it can be asked to stand surety for costs because of potential damage if they are found to be wrong. So, the disadvantages of taking this type of action includes the financial impact, the diversion of resources to deal with the matter and sometimes the potential for it to fail. However, on occasions this is an effective way to prevent damage to your trade marks.

Internet enforcement

In cases where trade mark violation occurs on websites (e.g. Facebook) the internet platform should have a set procedure for you to follow if you wish to have the offending material removed.

Taking legal action

While the threat of legal action is often sufficient to persuade the perpetrators of trade mark infringement to respect your rights, sometimes it may be necessary to actually take the case to court.

As this is a complex area of law and the financial stakes are so high it is advisable to seek expert help to guide you through the legal process.

How can Trademark Eagle help protect my trade mark?

Trademark Eagle’s in-house team of legal experts are ready to use their knowledge and expertise to advise you on all aspects of trade mark infringement – including taking preventive measures; reaching agreements with transgressors; and, where necessary, launching strong, effective legal action.

Call: 01223 208 624

Email: enquiries@trademark-eagle.com

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