Infringement And Enforcement Of Trade Marks

Trade marks are signs that are used to distinguish the goods or services provided by one business from those provided by another. Ultimately you may build up a good reputation for your brand which you will not wish third parties to take advantage of.

As well as protecting your business, trade marks also protect your customers by guaranteeing that the goods and/or services they are buying originate from your business and are therefore of a high quality.

Opposition and Infringement.

If third parties use identical or similar trade marks for identical or similar goods or services then the consumer may be confused as to their origin.

Once a mark is published there is a two (UK) or three (Europe) month opposition period. Therefore if a mark is filed that you think is similar to your mark you may oppose it during this period.

Additionally, once your mark is registered if a third party is using a mark that is identical or similar to yours it may constitute an infringement.

The table below gives an indication of what would constitute an infringement or be grounds for opposition proceedings:

Services

Infringement

A trade mark infringement action can be brought by the owner of the trade mark, since it has the exclusive rights in the trade mark. The party who has used the trade mark without consent must have done so “in the course of trade”, as opposed to for his/her own non-commercial purposes.

The accused party may have a number of lines of defence open to it and in some circumstances may try to defeat the trade mark owner’s claims by counter-challenging the validity of the registration(s) in question.

The aggrieved trade mark owner may have a number of remedies available if he successfully proves his trade mark has been infringed. Such remedies include;

  • Damages for any loss sustained due to the infringer’s actions
  • An injunction to prevent the infringer from continuing to infringe the trade mark
  • An requirement for the infringer to account for any profits associated with the infringement
  • An order against the infringer to remove the trade mark or destroy the goods in question
  • An order for the infringer to deliver up all relevant infringing goods

In addition to the above, there are also a number of sanctions under Criminal Law relating to unauthorized use of a trade mark which may be relevant.

Next –Litigation Strategies and Considerations.