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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 trade mark 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.
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.
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.
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.