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.
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.
Trade Mark Reviews
One of the greatest assets of any brand is it’s IP. Working with Rachael is a joy – her professional insight, experience and clear (no jargon) communication enables you to make informed decisions about how and where you protect your brand. Whatever stage of business/brand development you are currently at, I’d recommend speaking with Rachael, to find out what you can protect and the best ways to achieve a robust solution, that’s fit for purpose.
Extremely happy with the professional service provided by Ward Trade Marks in obtaining our trade mark. Their advice and support made the process stress free and I would not hesitate to recommend them to others.
Rachael is extremely personable and professional. She has handled all of our trade marking adventures over the last few years with success and efficiency. Highly recommended.
Rachael worked with my daughter and me to trade mark our company name, Arya Candles. She is a true professional and a delight to work with. Highly knowledgeable and nothing was ever too much trouble.
Rachael Ward provided us with excellent service over a period of over 3 years (2014-2017). Rachael is a very practical and pragmatic trade mark attorney: she gets quickly to the heart of a problem and is extremely efficient in her work. She has a good depth of knowledge about trade mark law, but never allows this to get in the way of clear-sighted, practical advice. I would strongly recommend any business to use Rachael Ward and Ward Trade Mark Services on trade mark issues.
As a marketing and design company it has been in the back of my mind since I launched TukTuk Creative Marketing to trademark the brand. There have been a few local companies who have recently had to change their name and branding because another company has objected. I love our company name, and it brings to life what I wanted to do when I started the company – taking brands on an inspiring journey, and what better way than on a TukTuk. To lose the name now or in the future would be crushing. Rachel has been amazing from the start, and I whole heartily trust her to set up the Trademark and follow up with any issues that occur along the way.
Rachael is very efficient and productive trademark law expert which helped us to register copyrights for few our brands. She did a good research and gave us useful advices. Their fees are very reasonable. We were happy working with her.
I approached Rachael after working unsuccessfully with two other trade mark companies. Rachael was a joy to work with. She explained everything very clearly and was very open and upfront with her pricing. I was kept fully updated of the progress of my application. I am pleased to say I have now got my EU trademark, thanks to Rachael.
Our initial consultation with Rachael at Ward Trade Marks reinforced our focus regarding our branding and Company marketing for the future. Once BoMoJo was officially registered and published it enabled us to apply and acquire @BoMoJo as a Twitter username from an account that had been dormant for over 6 years. Twitter processed our request, swiftly and promptly and all was completed within a week, transferring our followers from @BoMoJoProd to @BoMoJo. Quite simply a first-class service is what you can expect from Rachael, who is extremely efficient, using her experience, knowledge and expertise to deliver your Trade Mark requirements. Rachael is thorough and precise. Cristina and Barry have absolutely no hesitation in highly recommending Ward Trade Marks.
Having been recommended to us by a trusted friend, we engaged Rachael to acquire a trade mark for our new venture, and thank goodness we did. What we thought would be a simple application, met with objections from a company in the US, however Rachael’s sound, professional advice, steered us through the negotiations to a successful conclusion, TM approved! I would not hesitate to recommend Rachael to anyone who is not an expert in such matters, (and the bill was very reasonable too!)
Rachael was a business partner to Mars trade marks team advising on all product segments. Rachael applies a compelling mix of trade mark and commercial knowledge and experience to her advice. She is a clear communicator and client-focus is always number 1. A true collaborator and pleasure to work with.
As a branding agency, we believe that it’s critical for businesses to make sensible decisions about protecting their entities. We recommend using Ward Trade marks to our clients, as they fully comprehend the minutiae of the whole process and get it done in a fuss free, cost effective way, but most importantly, they make sure your brand assets are fully protected, which can alleviate a lot of potential heartache later on.
As a charity The Woodbridge Tide Mill Museum was hesitant to enter the world of trade mark protection for fear of endless paperwork and high costs. We were recommended to speak to Ward Trade Marks and it proved to be good advice. Bill and Rachael provided a fast, well-explained and cost-effective service so that the whole matter was resolved within a couple of months. No stress, no jargon just common sense, knowledge and experience. Highly recommended.
Ward Trade Marks were fantastic to deal with, they explained everything in an understandable way which for the layman made it easy to comprehend and have efficiently seen our application through from initial discussion to fruition. As a charity our name means everything and we wanted to protect it.
Friendly, knowledgeable people, who I feel we can trust with all of our Trademark concerns / issues. The company is available when I need them (answer my queries out of regular hours – not something I can expect but something I really value and appreciate) and I feel ‘goes the extra mile’.
-Loved your service. I thought the service was very friendly and professional and couldn’t ask for anything more really.
Great attention to detail, good updates right through the process – we were new to the trademarking process, you supported us through the journey. So from our perspective you fully met our requirement.
The team @ Ward Trade Marks and especially Rachael have been instrumental in supporting and developing the IP @ Crude Coffee. As a new startup business I cannot recommend highly enough the help, guidance and IP strategy that Rachael and the team have created for us. I would not hesitate to recommend them to any other start-ups or established businesses looking to create, develop and protect your IP!
Make an Enquiry
To make a no obligation enquiry, please either call us on 01284 774841 or make an online enquiry and we will be delighted to help you.