Protect Your Brand: Trade mark infringement

Stephen Baker and Oliver Williams of our Dispute Resolution team explain how to protect your brand from trade mark infringement.

Businesses with established brands are often targets for trade mark infringement. On the internet it is easy for infringers to try and pass themselves off as established brands.

If another business is using your brand name or logo or a knock-off to hijack your customer base, you may have legal recourse against them.

What constitutes trade mark infringement?

Trade mark infringement is a violation of the exclusive rights attached to a trade mark without the authorisation of the owner or licensees.

Someone may infringe your trade mark if they:

1. Use your trade mark brand name or logo on their business packaging, website or other advertising;
2. Misrepresent themselves online as your business or a branch of your business; or
3. Use a very similar name or logo to your trade mark brand.

These are only the most common examples of potentially infringing activity. The best approach to take when faced with potential infringement will depend on both the type of infringement and the rights that you have as the brand owner.

Our expert solicitors can assist you in determining the best approach against potentially infringing activities.

I have a registered UK trade mark

Registering a trade mark is the most effective form of protection against infringement.

Registered trade mark owners have many options available to them to tackle infringement which include the following:

1. Engaging with infringement policies – infringement is commonly done online. Internet platforms regularly have policies to combat infringement which should be followed as a first recourse.
2. Negotiation – coming to an agreement with the infringer such as altering their brand so that it no longer infringes on your trade mark, or licensing your brand to them. You may also consider entering a trade mark co-existence agreement, which allows two parties to clarify and agree their rights and obligations with respect to trade marks. Such an agreement should be considered in cases of misunderstanding where no active harm is being done to your business.
3. A cease and desist letter – a detailed letter to the infringer laying out the nature of your rights, their infringing activities, and giving them notice of further legal action.
4. An injunction – if the infringement is causing ongoing brand dilution and damage you may seek an ‘interim injunction’, which is a Court Order preventing the infringer from continuing their activities pending trial.
5. Court Judgment and final injunction – requires going through the litigation process and will usually end in a Court hearing.

If you have a registered UK trade mark which you think has been infringed, our specialist solicitors can assist you in enforcing your legal rights.

My trade mark is not registered

If you do not have a registered trade mark you may still have a claim against infringers in the law of ‘passing off’. Passing off is a tort or civil wrong which prevents third parties from exploiting the reputation of brands for their own benefit.

Passing off involves one business misrepresenting its goods or services as being those of another business. Use of a brand name or similar name may constitute passing off.

Making a claim for passing off has strict legal requirements and is less easy to prove than infringement of a registered trade mark. In making a claim for passing off it is best to retain legal professionals to assist you.

What if the infringer is overseas?

In cases of online trade mark infringement the infringer may well be in another country. Trade marks are territorial rights but can be enforced against foreign nationals who infringe them within the jurisdiction of England and Wales.

Alternatively, if the infringer is in a foreign country but targets or sells to UK consumers, this may be sufficient to establish infringement but it will depend on the particular facts.

How can we help?

Our specialist solicitors are skilled in identifying legal issues surrounding intellectual property rights and providing practical solutions to our clients’ disputes. For more information on the contents of this article or advice on the issues raised, please contact us to speak to a member of our Dispute Resolution Team.