Trade marks and the law

If you have gone to the lengths required to trade mark a word, phrase, logo or image unique to your business, then an infringement of that trade mark can stop you in your tracks.

Equally, if someone else has accused your business of imitating or encroaching on a trade mark, it can be difficult to know the best course of action to take.

First4Lawyers can help.

What is trade mark infringement?

Owning a trade mark allows you to prevent unauthorised use of it by anyone else, under the Trade Marks Act 1994. That also means stopping anyone else from using signs, phrases, logos and images that are similar to your trade-marked item when promoting goods and services that are similar to those protected by the trade mark.

The unlawful use of your intellectual property can take many forms, including affixing it to items or packaging offered for sale, importing or exporting goods under your trade mark, as well as using it on business papers or in advertising.

For a person to infringe your trade mark, all of the following conditions must apply:

• It has been used without consent.
• It has been used in the course of a trade with a view to commercial gain.
• It has been used in the UK.
• Identical marks have been used for identical or similar goods or services.
• There is a likelihood of confusion.
• The use falls within one of the infringing acts prescribed by the Trade Marks Act.

The infringement must affect the functions of your trade mark, by falsely indicating the origin or quality of other goods or services.

What are the penalties and remedies for trade mark infringement?

If trade mark infringement is successfully proved in court, the wronged party may be granted an injunction and a damages payment.

The injunction will prevent the guilty party from using it again, and the court may seize and destroy goods where necessary.

If the aggrieved person or company can prove they lost out financially, or that the infringing party made wrongful gains under the trade mark, it may lead to a damages payment.

In the most serious cases, which tend to involve wilful infringement of a trade mark, damage payments can be up to three times the amount of money lost, or wrongfully gained by the guilty person – depending on which is greater – and the infringing party can face a jail sentence of up to 10 years.

I believe someone is infringing my trade mark – what should I do?

We have solicitors who are experienced in trade mark law. They will be able to help you establish the strength of your case.

To establish that infringement has occurred, the court will want to know how widely the trade mark is recognised for your goods and services by customers in your market, and the similarity and association between your trade mark and the way in which it has been encroached upon will be thoroughly examined.

The first step towards resolving your case might be a “cease and desist” letter sent from a solicitor, which might lead to the infringing party agreeing to stop using your trade mark. Action through the civil courts is often required where money has been lost – or wrongfully gained – as a result of infringement.

I am being sued for trade mark infringement – what should I do?

The first thing to do is check the trade mark you are being accused of infringing has been registered.

If it has, there are a number of defences available to you. These include fair use, in which you can argue your actions did not harm anyone.

If it can be proved the trade mark is invalid, because it should not have been registered in the first place, your lawyer may use this to build your case. For example, the trade mark may lack a distinctive character, or, you believe, should not have been registered on moral grounds.

Equally, if the trade mark has not been used within five years of registration, has become generic, or been used to deceive consumers, you may be able to argue the trade mark should be revoked.

How can First4Lawyers help?

Whether you’ve been accused of using someone else’s trade mark, or believe someone has intruded upon a trade mark you own, we can put you in touch with an expert solicitor who can examine your case.

We can help work toward the resolution you want. Simply contact us for a no-obligation discussion about your circumstances.