Trade Mark Disputes

Common Trade Mark Dispute Questions

• How do you keep a watch on trade mark infringement?

  Proactively setting up a Watching Service is an effective way to protect your trade mark. This service alerts you to potential conflicts, such as new trade mark applications or registrations that mimic your brand. By staying informed, you can take swift action to prevent infringement and shield your business from harm.

  The Watching Service can also extend its scope to monitor company names and domain name registrations that might infringe on your trade mark, ensuring comprehensive protection across all relevant areas.

  Please discuss watching service with us if you would like to use the service.

• What is the difference between trade mark opposition and trade mark infringement, and how do I begin action?

  Trade mark opposition occurs during the registration process when a party objects to a new trade mark application because they believe it conflicts with their existing rights. This is a preventative action and is typically handled through the UKIPO or EUIPO by filing a notice of opposition within the relevant opposition period.

  Trade mark infringement, on the other hand, happens after a trade mark is registered. It involves unauthorised use of a registered trade mark that could confuse customers, dilute the brand, or cause harm to the trade mark owner’s business.

  To initiate opposition, you must submit a formal application to the Intellectual Property Office concerned, outlining the legal grounds for your objection. For infringement, you can start by sending a cease and desist letter and, if necessary, proceed with legal action in court to enforce your rights. Seeking professional guidance is highly recommended in both cases to ensure the best possible outcome.

• What are the criteria for trade mark infringement under the Trade Marks Act 1994?

  Under the Trade Marks Act 1994, trade mark infringement occurs when a person or business uses a mark similar to or identical to a registered trade mark without the owner’s consent. Key criteria include:

  • The infringing mark being identical or deceptively similar to the registered trade mark.
  • The goods or services being identical or similar, creating a likelihood of confusion among consumers.
  • The unauthorised use damaging the reputation or distinctiveness of the registered trade mark.
  • Use of the mark causing unfair advantage, even if it does not directly confuse consumers (e.g., exploiting the trade mark’s established reputation).

  The Act provides comprehensive protection to registered trade mark owners, ensuring they can take action if these conditions are met.

• How do I handle trade mark matters internationally?

  Handling international trade mark matters requires strategic planning, as trade mark laws vary across jurisdictions. One of the most efficient ways to secure international protection is through the Madrid Protocol, overseen by the World Intellectual Property Organization (WIPO). This allows you to file one application to cover multiple countries that are members of the Protocol.

  However, some businesses target specific markets outside these jurisdictions. In such cases, separate trade mark applications in the target countries may be necessary. Monitoring for potential infringement globally is also crucial, and customised watching services can help you take swift action to protect your rights in different regions. An experienced trade mark solicitor can guide you through the complexities of international trade mark law.

• How do I make a claim for trade mark infringement?

  To make a claim for trade mark infringement, the first step is to gather evidence of the unauthorised use of your trade mark, such as infringing products, marketing materials, or online listings. You will also need to prove that the infringing act meets the legal criteria for trade mark infringement, as outlined in the Trade Marks Act 1994.

  Once evidence is collected, the typical process involves sending a cease and desist letter to the infringing party, detailing the violation and demanding they stop using the mark. If the matter is not resolved amicably, legal proceedings can be initiated, either by filing a claim in court or, in simpler cases, submitting evidence to the relevant intellectual property office.

  Legal representation can help strengthen your claim and manage the process efficiently, from issuing warnings to pursuing litigation if necessary, ensuring your trade mark rights are upheld.