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Trade Mark Disputes

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As set out in our Trade Mark Registration page, under the Trade Marks Act 1994 (the "TMA"), having a registered trade mark in the United Kingdom allows the owner of that trade mark to use it exclusively when providing the goods and/or services for which it is registered.

Where a business has registered a trade mark in place, a proactive approach needs to be taken in order to ensure that third parties do not infringe upon its registered rights. At the very least, the brand, trading name, logo or otherwise that has been registered ought to be marked with the ® symbol, which will act as a preliminary indicator to third parties that the same is covered by a registered trade mark (note that it is an offence to use the ® symbol where formal registration has not been obtained). However, even with these preventative measures in place, trade mark disputes often arise where a third party (knowingly or mistakenly) offers goods or services that are of a similar nature to those covered by the registered trade mark.

Our intellectual property solicitors are on hand to assist should a third party infringe your registered trade mark; comparatively, should you be concerned that your business may be infringing on a third party's trade mark (or receive notice that you are committing trade mark infringement), we can advise as to your options in light of such.

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FAQs

How is a registered trade mark infringed?
 
 

The TMA sets out that a registered trade mark will be infringed by a third party if that third party:

uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered; or

uses in the course of trade a sign and because:

  • the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
  • the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered; and
  • there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark and the earlier trade mark; or
  • uses a sign which identical or similar with the earlier trade mark which has a reputation in the UK, and use of that sign takes unfair advantage of or is detrimental to the distinctive character of the earlier trade mark.

Typically, most trade mark disputes are based on grounds (a) and (b), and as with the relative grounds for refusing a trade mark, questions regarding the likelihood of confusing are usually determined following a consideration of both parties' respective customer bases, with a finding of confusion being more likely in cases of a flagrant misuse. Ground (c) is more commonly invoked by multi-national brands, which seek to prevent their trade marking being misused by third parties in what otherwise would be unrelated classes.

Should you be concerned that a third party has been using a trade mark that is similar to a trade mark register or have received notice that you are infringing on a third party's rights, please contact our intellectual property solicitors to discuss your matter further and for a no obligation quotation.

How is a registered trade mark infringed?
 
 

The TMA sets out that a registered trade mark will be infringed by a third party if that third party:

(a) uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered; or

(b) uses in the course of trade a sign and because:

(i) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or

(ii) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered; and

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark and the earlier trade mark; or

(c) uses a sign which is identical or similar with the earlier trade mark which has a reputation in the UK, and use of that sign takes unfair advantage of or is detrimental to the distinctive character of the earlier trade mark.

Typically, most trade marks disputes are based on grounds (a) and (b), and as with the relative grounds for refusing a trade mark, questions regarding the likelihood of confusion are usually determined following a consideration of both parties' respective customer bases, with a finding of confusion being more likely in cases of a flagrant misuse. Ground (c) is more commonly invoked by multi-national brands, which seek to prevent their trade mark being misused by third parties in what otherwise would be unrelated classes.

Should you be concerned that a third party has been using a trade mark that is similar to a trade mark register or have received notice that you are infringing on a third party's rights, please contract our trade mark lawyers/solicitors to discuss your matter further and for a no obligation quotation. Call today or get in touch here.

What remedies are available for a breach of my registered trade mark?
 
 

The most appropriate remedy for your business depends on the extent of the breach. The TMA sets out that the innocent party is entitled to the following remedies:

(a) damages: these would account for the lost profits (or license fee for use of their registered trade mark) that the innocent party will have suffered as a result of the breach;

(b) an injunction: this would prevent (i.e. injunct) the third party from infringing the registered trade mark in the future;

(c) an account for profits: this would require the guilty party to account to the innocent party for the profits that it has made as a result of the breach; or

(d) any other such remedy as is available to them.

Should you become engaged in a trade mark dispute with a third party, our trade mark lawyers/solicitors can advise as to which remedies are most suitable in the circumstances, setting out the same via pre-action correspondence, which is a pre-cursor to formal proceedings. Parties are advised to avoid recourse to formal proceedings where possible, and the majority of trade mark disputes reach settlement informally, via binding undertakings and some form of financial settlement.

What remedies are available for a breach of my registered trade mark?
 
 

The most appropriate remedy for your business depends on the extent of the breach. The TMA sets out that the innocent party is entitled to the following remedies:

damages: these would account for the lost profits (or license fees for use of their registered trade mark) that the innocent party will have suffered as a result of the breach;

  1. an injunction: this would prevent (i.e., injuct) the third party from infringing the registered trade mark in the future;
  2. an account for profits: this would require the guilty party to account to the innocent party for the profits that it has made as a result of the breach; or
  3. any other such remedy as is available to them.
  4. A quasi remedy (which typically arises via negotiations, which should be encouraged where appropriate) could also include an agreement between you and a third party in which you agree that you can both continue to use each other's trade marks provided there is no interference from the other, subject to restrictions. This would be classed as a co-existence agreement.

Should you become engaged in a trade mark dispute with a third party, our intellectual property solicitors can advise as to which remedies are most suitable in the circumstances, setting out the same via pre-action correspondence, which is a pre-cursor to formal proceedings. Parties are advised to avoid recourse to formal proceedings where possible, and the majority of trade mark disputes reach settlement informally, via binding undertakings and some form of financial settlement.

How will I know if someone has infringed my trade mark?
 
 

If your trade mark is already registered with the IPO, should anyone attempt to submit a trade mark application with the IPO for a trade mark that is similar to yours, whether that be the mark itself or the goods and services they provide, the IPO would notify yourselves of this. There would then be an opposition period for 2 months which would allow you to raise your opposition to the proposed trade mark. Such an opposition would be based on the relative grounds for refusal under the TMA, as above.

If you have been notified by the IPO regarding a proposed trade mark application or have come across a business using your trade mark, our intellectual property solicitors will carry out a detailed review of the same and provide you with advice on how to resolve the situation. In the vast majority of circumstances, it is possible to resolve the dispute at a pre-action stage; however, where this is not possible, our intellectual property solicitors will discuss the further steps that are available to you in enforcing your rights.

I have an unregistered trade mark, what recourse is available to me?
 
 

Unfortunately, the TMA does not prescribe any cause of action for a breach of an unregistered trade mark; however, this does not mean that you have no recourse for a third party's unauthorised use of your intellectual property. Please see our Passing Off page for further information on the protection and enforcement of your unregistered intellectual property rights.

I have an unregistered trade mark, what recourse is available to me?
 
 

Unfortunately, the TMA does not prescribe any cause of action for a breach of an unregistered trade mark. However, this does not mean that you have no recourse for a third party's unauthorised use of your intellectual property. Please see our Passing Off page for further information on the protection and enforcement of your unregistered intellectual property rights.

What happens if we need to litigate for infringement proceedings?
 
 

Trade mark infringement proceedings are typically brought before either the High Court or the Intellectual Property Enterprise Court ("IPEC"), but can also be brought in a number of County Court's across the UK.

The TMA sets out certain criminal offences relating to the unauthorised use of trade marks and can impose prison sentences and/or fines on conviction in some circumstances.

Civil infringement claims valued at no more than £10,000 may be brought in the IPEC's 'Small Claims Track' which is intended to be a more streamlined and cost-efficient way of dealing with low-value claims. The IPEC is generally suited to less complex, lower-valued claims, making this most suitable for individuals and small to medium-sized businesses. Claims issued before the High Court or the IPEC will generally be listed for a trial between 12-15 months from the date of issue.

Please contact our intellectual property solicitors today who will be able to discuss the procedure for issuing a trade mark infringement claim with yourselves and for a no obligation quote.

What are the defences to an infringement claim?
 
 

There are a variety of statutory defences to infringement which can found under section 11 and 12 of the TMA.

There defences are as follows:

  1. A registered trade mark is not infringed by the use of a later registered trade mark where that later registered trade mark would not be declared invalid pursuant to section 47(2A) or (2G) or section 48(1).
  2. A registered trade mark is not infringed by the use by an individual of their own name or address provided they use it in accordance with honest practices in industrial or commercial matters.
  3. A registered trade mark is not infringed by the use of signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.
  4. Another defence is for the use of a trade mark where it is necessary to indicate the intended purpose of a product or service, provided the use is in accordance with honest practices in commercial matters.
  5. A trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.
  6. Honest concurrent use of the trade mark.
  7. Under section 48 of the TMA, where the proprietor of an earlier trade mark or other earlier right has knowingly acquiesced for a continuous period of five years in the use of a registered trade mark for particular goods or services in the UK.
  8. Expiry dates of trade marks will be taken into account when determining the registrability of a later mark for a period of one year after the expiry unless the registrar was satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry.

If you are unsure whether your trade mark has actually been infringed or you have accidentally infringed on a third party's trade mark, our intellectual property solicitors will be able to give you the best advise in regards to this and provide you with the best route of course to resolve the situation swiftly.

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Our dedicated Intellectual Property team

John Pickervance

John Pickervance

Partner and Head of Commercial

Commercial

PinCentral Lancashire

Call0333 207 1134

Daniel Fletcher

Daniel Fletcher

Associate

Commercial

PinCentral Lancashire

Call0333 207 1145

Katie Lee

Katie Lee

Solicitor

Commercial

PinCentral Lancashire

Call0333 207 4463

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