Infringement

What is trade mark infringement?

If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. This includes the case where because of the similarities between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.

Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.

What about unregistered trade marks?

There is no available remedy for trade mark infringement if the earlier trade mark is unregistered. Some unregistered trade marks may be protected under Common Law and this is known as Passing off. However, whether or not they are protected will depend on the particular circumstances, in particular:

• Whether, and to what extent, the owner of the unregistered trade mark was trading under the name at the date of commencement of the use of the later mark;
• Whether the two marks are sufficiently similar, having regard to their fields of trade, so as to be likely to confuse and deceive (whether or not intentionally) a substantial number of persons into thinking that the junior user’s goods and services are those of the senior user;
• The extent of the damage that such confusion would cause to the goodwill in the senior user’s business.

I think that I maybe infringing, what should I do?

Get legal advice. There may be a number of potential courses of action or defences open to you, but this will very much depend on the particular circumstances of your case.

Some traders who think they may be infringing an earlier trade mark choose to cease trading under the offending sign, others choose to approach the earlier trade mark owner and attempt to negotiate a way forward that suits both parties, which may include a co-existence agreement.

If you decide that you are not infringing, or you have a good defence, you may decide to stand your ground or even to sue the trade mark holder for making unjustified threats. In the worst case scenario, you may have to change your trade mark and re-brand your products or services.

I think that someone else maybe infringing, what should I do?

Get legal advice as the most suitable course of action will depend on the particular circumstances of your case.

One potential option open to you is to write to the infringer. However you must be satisfied that the earlier trade mark that you own and the activities of the infringer justify this. This is because the law also protects traders from unjustifiable threats of trade mark infringement.

You may be able to negotiate a settlement which suits both parties, which may involve a co-existence agreement. Another option is that you may be able to get a court order to force the infringer to cease trading and pay compensation for damages. However, infringement actions must be taken to the High Court or in Scotland, the Court of Session. We do not handle such actions.

You can get legal advice, from The Institute of Trade mark Attorneys (ITMA) , The Chartered Institute of Patent Attorneys (CIPA) or The Law Society .