Trade Mark Enforcement
Trade mark enforcement is essential if you want to protect your brand’s value.
The first step to ensuring the strength of your trade mark is to make sure it is registered correctly for the products or services in which you trade. Once this is done, you can take action against others for trade mark infringement.
The second is to be vigilant. The act of registration doesn’t stop conflicting applications. It’s down to you to prevent the use and registration of any trade marks which are the same or similar to your own.
Keeping an eye on everything that happens in your industry is impossible, which is why our team will:
- Monitor the Trade Mark Registers for any potentially conflicting new applications using bespoke software
- Lodge a Form TM7A Notice of Threatened Opposition on your behalf if an application is published which is the same or similar to your earlier trade mark
- Handle all correspondence with the Intellectual Property Office during the opposition process and log all relevant deadlines, to ensure no loss of rights
- Send cease and desist letters to infringers, ensuring that any use of the same or similar mark is halted at an early stage
- Help you if you receive a cease and desist letter, or become involved in trade mark infringement proceedings
In essence, we will make sure your rights are protected and enforced where necessary so you can get on with running your business.
Free Guide: Everything A Business Owner Needs To Know About Trade Marks
The guide will explain to you in detail the essentials of trade mark protection including:-
- Choosing a distinctive brand name – why a good choice will resonate with your customers and reduce your advertising and marketing spend.
- The importance of avoiding the descriptive/ generic trade mark trap.
- The importance of pre-filing searches – done the correct way – to avoid future legal action against you and the risk of having to rebrand.
- Strategy on when to time your application.
- Realising the value of your trade mark – why your trade mark is considered an asset on your balance sheet.
- The importance of maintaining and enforcing your registered trade mark rights once your mark is registered.
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When would you need to enforce your trade mark?
There are various grounds for trade mark infringement, and these can be found in the Trade Marks Act 1994, the statute which covers the law relevant to trade marks:
The marks and goods are identical
An unauthorised third party uses a mark that is identical to a registered trade mark for identical goods and services. Goods may still be considered identical in an infringement action, even if those goods are classified in different classes
Identical or similar marks, for identical or similar goods and services
In these instances, it is necessary to prove that there is a likelihood of confusion on the part of the average consumer seeing the respective trade marks, which includes a likelihood of association. This part of the Act is all about confusion – would a member of the public be confused and think that the marks are from the same company? Whether or not confusion is likely needs to be appreciated on an overall basis, and there are many elements to be taken into account in deciding whether the marks are visually, aurally and/or conceptually similar. The case law in this area is vast and Chartered trade mark attorneys have studied this in depth, allowing them to provide you with an opinion on whether to take action against another party for trade mark infringement, or whether another party will be successful against you
Trade marks with a reputation
It’s possible for a party to allege that your use of a trade mark damages their reputation, or takes unfair advantage of the hard work which they have put in to building their brand. Here it’s not necessary to show confusion, but it is necessary to show a reputation amongst a significant part of the public, as you can allege infringement under this ground even when you are dealing with different goods or services.
How do I know if my registered trade mark is being infringed?
Monitoring the market and trade mark registers is the only way to keep an eye out for cases of trade mark infringement. However, it is time-consuming and something that could easily be forgotten about, potentially leaving your brand vulnerable.
However, here at Ward Trade Marks, we can help.
Our WARDWATCH® service gives peace of mind that your trade mark isn’t being registered without your knowledge.
What does WARDWATCH® do?
With WARDWATCH® you will be alerted immediately if a trade mark is filed (that is, applied for) which is the same or similar to yours, for the same or similar goods and services.
We use specialist software that monitors the trade mark registers of the UK and EU (and beyond, if you trade in any overseas countries.
Let’s face it, after investing time and money growing your business and your brand, the last thing you need is another company weakening your IP value by filing a similar mark. The more this happens, the less value your registered trade mark has because it becomes diluted. If other businesses see that another trade mark coexists with yours on the Register, they’ll think that there’s room for theirs to coexist with you too – and they’d probably be right about that so don’t allow coexistence in the first place.
It pays to be vigilant when protecting your trade mark and our early warning system, WARDWATCH®, helps you stop a bad situation before it starts.
Trade mark infringement
If you are concerned that your trade mark registration is being infringed, get in touch straight away.
Usually, the first step is to write a “cease and desist” letter. This insists that the use of the infringing trade mark is stopped immediately. Frequently, this is combined with legally binding undertakings, which sets out the infringing party’s future responsibilities to make sure that no further acts of infringement happen. As part of the process, you can request the infringing party to hand over the goods or destroy them, to destroy any packaging materials which have been printed or made, and to pay for the costs you have incurred in getting to this stage.
In most cases, a correctly worded cease and desist letter is sufficient to get both parties talking and to reach an amicable resolution. After all, it is in neither parties’ commercial interests to embark upon protracted and costly trade mark infringement proceedings if the matter can be resolved.
What happens if your trade mark isn’t registered?
If you haven’t registered your trade mark, you can’t rely on the statutory law of trade mark infringement.
Instead, you have to rely on passing off, which is a common law tort. To show that passing off has occurred, the court will typically look for you to establish three elements:
- That you possess goodwill in your goods, name, mark, or other identifying feature
- There has been a misrepresentation by another party which has meant diversion of your business
- That misrepresentation has caused damage, or could cause damage, to your goodwill
All of these points must be established by evidence.
It’s also possible for your business to have a goodwill, but depending on the type of business, that goodwill may only extend to a five mile radius of your business address. On the other hand, if you have a trade mark registration, this provides you with national rights, not just in a particular locality.
Compared to trade mark infringement, passing off is a complicated, slow, and costly avenue to explore. That’s why we always recommend you register your trade mark so that if you do come across an infringement, you simply have to evidence the existence of your trade mark rights by showing your registration certificate.
Enforce your rights
If you want to protect your brand’s reputation, goodwill, and your consumers, it’s vital you enforce your rights.
With Ward Trade Marks you know you have a chartered trade mark attorney on your side who will fight your corner and achieve the best possible outcome.
Make an Enquiry
To make a no obligation enquiry, please either call us on 01284 619000 or make an online enquiry and we will be delighted to help you.