Trade Mark Infringements

Forbes Solicitors' trademark infringement lawyers provide expert advice on resolving trademark disputes, including infringement claims and oppositions to trademark applications.

More about Trade Mark Infringements

Our experienced trademark infringement solicitors can help you to protect your trademarks and brand reputation, ensuring that you can continue to do business without interference. We work with a range of clients, from individual creators to multinational corporations, to resolve their trademark disputes effectively.

What are Trade Mark Disputes

What are Trade Mark Disputes

Trade mark disputes are disagreements between parties over who has the right to use a particular trademark. Disputes often arise where businesses operate under similar trade marks in a similar field, and what must be proven is that a likelihood of confusion exists between the two. Where a trade mark has a reputation it is also possible that use of it or a similar trade mark in a dissimilar industry may take advantage of that reputation.

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.

Why choose our trade mark disputes solicitors?

Why choose our trade mark disputes solicitors?

At Forbes Solicitors our trademark disputes lawyers have extensive experience in handling complex trademark disputes and have a proven track record of achieving successful outcomes for our clients. We provide tailored and cost-effective solutions to protect your brand and intellectual property rights. Our team is dedicated to providing exceptional client service and will work closely with you to understand your needs and objectives. We are committed to achieving the best possible outcome for you and your business.Who do our trademark disputes solicitors help?Our trademark disputes solicitors help individuals and businesses who are involved in disputes over the ownership, use, or infringement of trademarks.

How can our trade mark disputes lawyers help?

The team who handle trademark disputes can help by providing legal advice and representation in disputes related to trademark infringement, registration, and enforcement. We can assist in protecting your brand and intellectual property rights, negotiating settlements, and litigating in court if necessary. Our team has extensive experience in handling trademark disputes and can provide tailored solutions to meet your specific needs. We are committed to protecting your interests and ensuring the best possible outcome for your case.

Our team of solicitors possess extensive expertise in providing legal services and support for Trade Mark Disputes to clients nationwide. Contact us today to speak with our team.

Trade Mark Disputes FAQs

How is a registered trade mark infringed?

A registered trade mark is infringed when someone uses a sign that is identical or similar to the registered mark in relation to goods or services that are identical or similar to those covered by the registration, without the owner's permission. This can include using the mark on products, packaging, advertising, or in any other way that could cause confusion among consumers.

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;

an injunction: this would prevent (i.e., injuct) the third party from infringing the registered trade mark in the future; 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 any other such remedy as is available to them. 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.

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?

If infringement proceedings are necessary, the claimant must file a claim in the appropriate court. The defendant will then have the opportunity to respond and defend their actions. The court will consider the evidence presented by both parties and make a decision on whether infringement has occurred. If infringement is found, the court may order the defendant to stop infringing and pay damages to the claimant.

What are the defences to an infringement claim?

The defences to an infringement claim in UK law can include:

  1. non-infringement, where the defendant argues that their actions did not infringe on the claimant's rights;

  2. invalidity, where the defendant argues that the claimant's rights are invalid or unenforceable;

  3. prior use, where the defendant argues that they had been using the same or similar mark before the claimant;

  4. fair dealing, where the defendant argues that their use of the mark was fair and reasonable.

What can you do if someone is using your trademark?

If someone is using your trademark without your permission, you can take legal action against them. This can include sending a cease and desist letter, filing a trademark infringement lawsuit, or seeking damages for any harm caused to your business. It is important to consult with a lawyer who specialises in trademark law to determine the best course of action.

What happens if my trademark is opposed UK?

If your trademark is opposed it means that someone has filed an objection to your application. The opposition process involves a hearing before the UK Intellectual Property Office (IPO), where both parties can present evidence and arguments. If the IPO decides in favour of the opposition, your trademark application will be refused or restricted. If the IPO decides in your favour, your trademark will be registered.

What are the common causes of trademark disputes?

Common causes of trademark disputes include infringement, passing off, and opposition to registration. Infringement occurs when someone uses a trademark without permission, while passing off involves misrepresenting goods or services as those of another. Opposition to registration can occur when someone tries to register a trademark that is too similar to an existing one. Other causes of disputes may include disputes over ownership or licensing of a trademark.

What are the legal remedies available for trademark disputes?

The legal remedies available for trademark disputes include injunctions, damages, account of profits, and orders for delivery up or destruction of infringing goods. The trademark owner can also seek a declaration of infringement and/or invalidity of the infringing mark. The dispute can be resolved through court proceedings or alternative dispute resolution methods such as mediation or arbitration.

How long does a trademark dispute typically take to resolve?

The length of time it takes to resolve a trademark dispute can vary depending on the complexity of the case and the court's schedule. It can take several months to a few years to reach a resolution.

Can I resolve a trademark dispute without going to court?

Yes, it is possible to resolve a trademark dispute without going to court. The first step is to try to negotiate a settlement with the other party. This can be done through mediation or arbitration. If a settlement cannot be reached, the parties can consider using the Intellectual Property Office's (IPO) mediation service. The IPO's mediation service is a free service that helps parties resolve disputes without going to court.

What are the costs associated with resolving a trademark dispute?

The costs associated with resolving a trademark dispute can vary depending on the complexity of the case and the legal fees of the parties involved. The costs may include legal fees, court fees, expert witness fees, and other expenses related to the litigation process. In some cases, the losing party may also be required to pay the legal costs of the winning party.

Can I trademark a slogan or a logo?

Yes, you can trademark a slogan or a logo . A trademark is a sign that distinguishes the goods or services of one business from those of another. A slogan or a logo can be registered as a trademark if it is distinctive and not too similar to existing trademarks. Once registered, the trademark owner has exclusive rights to use the trademark in relation to the goods or services for which it is registered.

What happens if someone infringes on my trademark?

If someone infringes on your trademark you can take legal action against them. This may involve sending a cease and desist letter, filing a claim with the Intellectual Property Office, or pursuing a lawsuit in court. If successful, you may be awarded damages and the infringing party may be ordered to stop using your trademark. It is important to act quickly and seek legal advice to protect your rights.

Our dedicated Intellectual Property team

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Partner and Head of Department, Commercial

John Pickervance

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Senior Associate, Commercial

Daniel Fletcher

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Associate, Commercial

Katie Lee

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