A “trade mark” is a symbol, sign, word, or words that are legally registered or established by use as representing a company and/ or product.
Trade mark infringement occurs where a registered trade mark is used in the course of trade without the owner’s consent when:
- The sign used by the infringer is identical with the registered trade mark and is used in relation to goods or services which are identical with those for which the trade mark is registered; or
- The sign used by the infringer is identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered; or
- Where the sign used by the infringer is similar to the registered trade mark, and used in relation to goods or services which are identical with or similar to those for which the trade mark is registered.
In order for a trade mark right to be infringed, there must be confusion by the public, which includes a likelihood of association between the two products/ companies.
Furthermore, if the sign used by the infringer is identical or similar with the registered trade mark and the trade mark has a reputation in the UK, and use of the sign is detrimental to, or takes unfair advantage of the trademark’s character or reputation, trade mark infringement occurs.
Civil proceedings for registered trade mark infringement and/or a claim passing off of a UK mark may be brought. The two usually come hand in hand when considering proceedings.
Who can bring trade mark infringement proceedings?
- The registered proprietor (or its co-owner); or
- An exclusive license holder of the trade mark (subject to conditions).
First steps
It is advisable to send a cease-and-desist letter (or a ‘letter before action’) before commencing infringement proceedings, unless it would increase the risk of loss of evidence, or it would risk being deemed a ‘groundless threat’.
Next steps
If a cease-and-desist letter has been unsuccessful, or it is not an appropriate first step, then it may be necessary to considering bringing trade mark infringement proceedings.
There are both interim and final remedies available in trade mark infringement proceedings. What is appropriate will depend on the individual circumstances of each case which will need to be considered individually.
This list is not exhaustive.
| Interim Remedies | Final Remedies |
| An interim injunction pending trial. | A final/ permanent injunction |
| A search order – whereby the opponent’s solicitors will attend the premises to obtain and seize evidence. | Money remedies (such as damages or an account of profits) |
| An order for early disclosure. | Delivery/ destruction of the infringing goods |
| A freezing order (to retain assets of the defendant) | Publication of the Courts decision (this is a commercial remedy and can have a large effect on the defendant) |
To discuss a possible trade mark infringement, contact Chelsey Wileman on 0116 478 5905 or email chelsey.wileman@bhwsolicitors.com
Categorised in: Dispute Resolution, Knowledge, News
Tags: Company Law, Dispute Resolution, Trade Marks