How Do I Protect And Defend My Brand Name and Other Trade Marks?
How to address trade mark infringement
Registered trade marks are the bedrock of an effective brand protection strategy, giving their owner a monopoly over the use of the marks in connection with the relevant goods or services. If a third party uses a registered trade mark without permission, they may be liable for trade mark infringement, the effects of which can be catastrophic to your brand’s reputation. Trade mark infringement can cause marketplace confusion, erode consumer trust and loyalty, create negative brand associations and, ultimately, significantly affect profitability.
Once a trade mark is registered, it is the owner’s responsibility to identify and take action against any instances of trade mark infringement. It is essential to proactively monitor the marketplace and tackle all acts of infringement swiftly and decisively. Here, we explain why trade marks are so crucial to your business and how you can protect them against unlawful use by third parties.
What is a trade mark?
A trade mark is a ‘badge of origin’. It indicates the origin of goods or services and, in doing so, provides assurances about matters of importance to consumers, such as ethics and quality. For example, a consumer may choose an Apple Macbook over lesser-known laptops in the expectation that it will deliver superior performance and reliability.
A comprehensive trade mark portfolio is an essential element of brand protection. While your branding may benefit from protection afforded by unregistered rights, for example, under the law of passing off, such claims are notoriously difficult to prove. A claimant in a passing off action must produce extensive evidence of their use of the branding to establish their rights. Trade mark infringement claimants, on the other hand, generally need only produce their trade mark registrations. Furthermore, registered trade marks act as a deterrent against copycats. A business that vigorously protects its legal rights may be imitated less than those who adopt a more relaxed approach.
What can a trade mark protect?
As a general rule, provided the sign is capable of distinguishing the goods and services of one trader from those of another, anything that can be depicted graphically can be registered as a trade mark. Most businesses are primarily concerned with protecting their brand’s name and logo, but trade marks can protect all manner of branding, including shapes, sounds, colours and even smells.
In the UK, a trade mark must meet strict criteria to be eligible for registration. The branding must be distinctive and distinguish the owner’s goods and services from those of other businesses. Crucially, descriptive marks cannot be registered. For example, you are very unlikely to obtain registration for the mark ‘The Ice Cream Parlour’ in respect of a café selling ice cream and other sweet treats. A suggestive word that merely hints or alludes to a characteristic of the goods or services (eg Airbus, Greyhound, Jaguar, Coppertone) make good registerable trade marks and are great from a marketing prospective. Registration of offensive marks is not permitted, and a trade mark must not mislead consumers. Fanciful or invented words, such as Kodak, Audi, Exxon, Xerox, Rolex and Apple for computers make the strongest trade marks, since their only relevance is in connection with their brand.
Why should you protect your brand as a trade mark?
Trade marks offer potent protection for a relatively modest cost. Provided they are correctly renewed, their protection can last indefinitely. The first trade mark registered in the UK, for Bass Pale Ale, achieved registration in 1871 and is still in force today.
The benefits of trade mark protection are wide and varied. They include:
- Encouraging consumer trust and loyalty. Nurturing a well-protected, well-managed brand goes a long way towards earning and maintaining a loyal customer base.
- Protecting against imitation. The mere presence of the registered trade mark sign on a product can deter copycats.
- Facilitating commercialisation. It is far easier to monetise a brand with a well-managed trade mark portfolio, than one without.
How is a trade mark infringed?
Under UK trade mark law, a trade mark can be infringed if one of the following situations arises:
- A third party uses (1) branding that is identical to a registered trade mark in connection with (2) goods or services that are identical to those for which the trade mark is registered. If, for example, someone other than Apple affixed the Apple logo to a laptop, they may be liable for trade mark infringement.
- A third party uses (1) branding that is identical to a registered trade mark in connection with (2) goods or services that are similar to those for which the trade mark is registered, or (1) branding that is similar to a registered trade mark in connection with (2) goods or services that are identical to those for which the trade mark is registered, and (3) where the use creates a risk of consumer confusion.
Using the Apple example, if someone other than Apple affixed a logo similar to the Apple logo on a laptop – a complete apple, perhaps – they might be liable for trade mark infringement if consumers were confused into believing they were purchasing a genuine Apple product.
- A third party uses (1) branding that is identical or similar to the registered trade mark in connection with (2) goods or services that are not similar to those for which it is registered, but (3) where the use takes unfair advantage of the trade mark’s reputation, or damages it in some other way. To succeed in establishing infringement under this heading, the trade mark must have a reputation in the UK. Examples of brands that the Courts have judged to have the level of reputation required include Betty Boop, Claridges and the raw pet food brand, Natural Instinct.
Why should you protect your trade marks against infringement?
Obtaining a registered trade mark is merely the first step towards effective brand protection. Once the mark is registered, you must proactively protect and enforce it. If you don’t, you may suffer the following consequences:
- Your brand becomes diluted.
Failing to monitor your brand can cause brand dilution, which can be damaging to your business and its reputation.
An example of this is Burberry. During the 1990s, an ill-advised extensive licencing programme of the iconic Burberry check, together with widespread counterfeiting, caused the brand to become synonymous with so-called ‘Chav culture’ and lose the luxury persona it had worked so hard to build. The brand has since rebuilt its reputation, but its troubles are a stark reminder of the importance of actively protecting trade marks against infringement.
- Your trade marks become generic.
There is a fine line between brand recognition and becoming so well-known in your sector that your brand becomes inseparable from it. In trade mark law, this is known as ‘genericide’, and can spell disaster for the relevant trade mark. Once your trade mark ceases to distinguish your goods or services from those of others (merely being a product descriptor), the law considers that anyone should be free to use it. The registered mark is then potentially liable to cancellation. Examples of brands that have succumbed to genericide include Hoover and Sellotape.
The types of strategies that can prevent genericide include the following:
- Contacting anyone using your brand name in a ‘generic’ sense, such as in blog posts, dictionaries or magazines, to politely inform them that that their terminology is incorrect.
- Using your trade mark alongside a descriptor of the type of goods or services you provide. For example, Google might use the phrase ‘Google search engine’ to educate consumers that Google is the name of the brand, not the name of the service.
- Using appropriate symbols like ® or TM to alert consumers to the fact that the name is branding, not the name of the goods or services.
- Establishing clear brand guidelines. If you operate a licensing programme or any other type of brand commercialisation, you must ensure your business partners understand how to correctly use your trade marks.
- You face difficulties when trying to commercialise your brand.
Potential licensees or investors will expect to see a well-managed trade mark portfolio that comprehensively protects your brand and, in turn, their investment. If you do not have one, or if it is not actively monitored and enforced, it is often more difficult to attract business partners and generate income streams from your brand.
How to detect trade mark infringement
The onus is on you, as the trade mark owner, to detect and address infringements. You must, therefore, put measures in place to do so. The measures required will depend on various factors, including the nature and size of your business.
Examples of the strategies brands regularly employ to identify instances of trade mark infringement include the following:
- Monitoring trade mark applications
By monitoring any trade mark applications that might impact your brand, you can potentially prevent them from achieving registration.
If you do not have the resources or know-how to monitor trade mark applications yourself, your trade marks solicitors can do it for you. They will use specialist software to keep an eye on all relevant trade mark applications, both in the UK and any other country you operate in, and alert you to any that might be problematic.
- Monitoring competitors’ activities
Well-informed brands have always closely monitored their competitors’ activities for trade mark infringement. In the past, this may have involved visiting physical premises, relying on tip-offs or becoming aware of consumer confusion. Nowadays, with the prevalence of online trading, many brands can effectively monitor their competitors from the comfort of their offices. For more sizeable brands, those with a particular counterfeiting problem or those who simply do not have the time to dedicate to the task, specialist companies can assist.
- Monitoring online marketplaces and social media
Online marketplaces such as eBay and Etsy have revolutionised the cottage industries, allowing sellers access to a global audience. At the same time, however, they have significantly increased the potential for brand impersonation and copycats.
Many sellers routinely use registered trade marks without permission, thereby potentially infringing those marks. For example, a cursory search of eBay produces thousands of accounts selling unofficial band merchandise, such as t-shirts and calendars. The majority of the products feature the band’s name and logo, which are likely to be registered as trade marks for merchandise. Similarly, social media is a hotbed of impersonator accounts, through which infringers direct users to their own websites and away from those of the brand owner.
How to tackle trade mark infringement
As soon as you become aware of a third party infringing your trade marks, it is a good idea to take the following initial steps:
- Seek legal advice. Prompt advice from a trade marks solicitor will ensure you understand your legal position and the options available to you, and avoid doing anything to inadvertently jeopardise your case.
- Gather evidence. The more evidence you gather of the infringements, the stronger your position will be. The types of evidence required will vary depending on the circumstances but might include screenshots of the infringing items being offered for sale or the social media accounts, photographs of the offending goods and test purchases.
- Take any witness accounts. If you were made aware of the infringements by third parties – through consumer confusion, perhaps – you should obtain written statements from those witnesses wherever possible. If your interactions are in person, you should try to follow up in writing, or at least make a detailed, dated note of your conversations.
Our clients are often relieved to learn that there are several ways to tackle trade mark infringement that do not necessarily involve court action. Depending on the situation, the measures that might be suitable include the following:
- Opposing a trade mark application
If your trade mark monitoring system highlights a potentially problematic third-party application, you can raise an ‘Opposition’, objecting to registration of the third-party trade mark on the basis that it would infringe your earlier registered trade marks.
Oppositions must be sent to the Intellectual Property Office (IPO), the body responsible for registering trade marks in the UK. The Opposition procedure is fairly technical and subject to strict time limits, so it is important to seek early expert legal advice before embarking on it. If your Opposition succeeds, the trade mark application will be refused. If it fails, the trade mark will proceed to registration.
- Using the online platform’s trade mark infringement policy
Many online marketplaces and social media sites operate bespoke trade mark infringement policies that allow brand owners to request the takedown of goods, shops or accounts they allege infringe their trade mark rights.
Upon receiving an accurate infringement notice, most online platforms will remove the relevant material. However, some will reinstate the listings if the brand owner does not instigate court proceedings within an allocated time frame, so the policies must be used with care and in line with a wider brand protection strategy.
- Contacting Border Force and Trading Standards
Trade mark infringement can constitute a criminal, as well as a civil offence. The vast majority of trade mark infringement cases are addressed by the brand owner itself through the civil courts, but some might seek the help of criminal enforcement agencies such as Border Force or Trading Standards. This type of action is often taken by businesses facing a significant counterfeiting problem, to tackle repeat infringers against whom civil remedies are proving ineffective, or where the goods being sold under the registered trade mark pose a risk to the public, such as sub-quality children’s products.
Border Force will detain any infringing goods imported into, or exported out of, the UK and then destroy them, or release them to the rights owner to take the appropriate legal action. If Trading Standards agree to get involved, they will work alongside the police to criminally prosecute the infringer, who may face a fine or imprisonment.
- Contacting the infringer
Sometimes, receiving a letter from a law firm is enough to persuade an infringer to stop their unlawful activities. This is known as a “Cease and Desist” letter, because it demands that the recipient ceases their infringements, and agrees to stop or desist from future infringements.
The letter will detail the nature of your rights and how the relevant activity infringes them. It will set out the action required from the recipient – usually, the cessation of the infringement, an agreement to refrain from future infringements, and payment of damages and legal costs – and inform the infringer that you will take further legal action should they fail to co-operate.
- Pursuing Litigation
Litigation is sometimes the only viable option to effectively protect your brand. However, issuing proceedings does not necessarily mean you will end up in court. Many trade mark infringement cases are settled before trial, by the parties reaching an agreement through negotiations between their legal advisors or alternative dispute resolution methods, such as mediation. These methods are often quicker, cheaper and less stressful than a court hearing, and have high success rates.
Remedies for trade mark infringement
The main remedies available in civil trade mark infringement cases are as follows:
- Injunctive relief
The primary aim of a brand pursuing a trade mark infringement claim is usually to stop the infringement. This is achieved through an injunction.
An injunction prohibits the infringer from carrying out the acts specified in it. If the injunction contains a penal notice, which most do, any breach by the infringer will constitute contempt of court and may result in imprisonment. Strict criteria apply for a trade mark infringer to be committed to prison, but the courts do not shy away from doing so, particularly where the infringements are wilful and flagrant.
Trade mark infringement claims can take many months or even years to reach trial, so many trade mark owners seek an ‘interim injunction’ to stall the infringements in the meantime. Since this involves the infringer potentially being prevented from doing something that could later be judged to be acceptable, brand owners must satisfy a series of strict criteria to obtain an interim injunction. Essentially, the Court will seek to maintain the ‘status quo’ and will only award an interim injunction when it is fair and reasonable. Often, an alleged infringer will agree to stall their actions pending resolution of the dispute to allow the parties an opportunity to negotiate a settlement.
- Damages or an account of profit
Where trade mark infringement is established, a brand owner is usually entitled to financial compensation from the infringer. The compensation can be based on damages, being the loss sustained by the trade mark owner, or on the profits made by the infringer from their unlawful activities. The brand owner is entitled to choose whichever method benefits them the most.
If an infringer has made significant sums from their activities, it might make sense for a brand owner to elect that the infringer accounts to them for their profit. If the infringer has not made a large profit, or if the losses sustained by the trade mark owner outweigh them, damages might be preferable.
If a brand owner elects compensation by way of damages, the issue of how those damages should be calculated arises. There are several potential calculation methods. For example, if a trade mark owner operates a licensing programme, it might be sensible to calculate damages based on what the infringer would have had to pay to use the trade marks under a licence. Alternatively, if the brand owner can prove losses – by way of diverted sales or reputational damage, for example – damages might be calculated according to those losses. Clearly, a brand owner will seek the method that gives the highest damages award, whereas the infringer will argue for the method that gives the lowest.
Calculating damages or an account of profits in trade mark infringement cases can be a tricky process, and the quantum element of a case can be as hard fought as the liability aspect. Sometimes, forensic accountancy input is necessary to assist the parties and Judge in understanding the financial reality of a situation.
- Delivery up or destruction
Brand owners are often anxious to ensure that the infringing material is taken out of circulation. They achieve this by ensuring such material is either delivered up to them or destroyed. Sometimes, if appropriate, infringing items can be donated for charitable purposes, often with the infringing elements removed.
The intrinsic value of a business’s brand can be significant, often dwarfing the cumulative value of all other assets. One of the most efficient and cost-effective ways of protecting a brand is through developing and protecting a comprehensive registered trade mark portfolio. It is crucial that you obtain registration of your trade marks (whether they are words, slogans, logos, the shape of your products or their packaging or the more unusual kinds of trade marks) at the earliest possible stage of development, and subsequently monitor the marketplace to ensure all instances of infringement are detected and addressed as soon, and as rigorously, as possible.
How we can help
At The Jonathan Lea Network, we can:
- Conduct trade mark clearance searches
- File trade mark applications to register a brand name, trading name, logo or other trade mark and manage the process through to registration (in the UK and overseas)
- Assist in opposing registration of someone else’s conflicting mark or defending you against such threatened opposition
- Assist in post-registration matters, for instance, non-use cancellation, consents, limitation of the specification of goods and services
- Take action to prevent the use of your trade mark or similar mark by third parties
- Defend you if you are accused of using someone else’s trade mark
- Advise you in choosing an appropriate trade mark – some trade marks are legally stronger than others Assist in the exploitation of your trade mark, for instance, licensing, sale, mortgaging, franchising, etc
- Assist with the renewal of your trade marks
For all new clients, we offer a no-cost and no-obligation call of up to 20 minutes to first discuss your matter and requirements before confirming a scope of work and quote. This can be arranged by sending your details together with an overview of your matter through our contact form.
This article is intended for general information only, applies to the law at the time of publication, is not specific to the facts of your case and is not intended to be a replacement for legal advice. It is recommended that specific professional advice is sought before relying on any of the information given. © Jonathan Lea Limited 2023.