Guide to trade mark infringement in the UK

Trade mark infringement is a serious issue that can have significant consequences for businesses. When someone uses a trade mark that is similar to a registered trade mark in a way that is likely to confuse consumers, it can result in a loss of revenue and can damage the reputation of your brand.

What is trade mark infringement?

A registered trade mark is infringed by use in the course of trade of another sign which is:

• identical with the trade mark in relation to goods or services which are identical with those for which it is registered; or
• identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered and there is a likelihood of confusion on the part of the public, which can include a likelihood of association with the registered mark; or
• similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered and there is a likelihood of confusion on the part of the public, which can include a likelihood of association with the registered mark or
• identical or similar to the trade mark where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

What constitutes trade mark infringement in the UK?

An infringing act can take the form of using a trade mark that infringes your registered mark, for the sale of goods or the supply of services. Or, it can involve applying an infringing sign to packaging, labels, security devices, tags or other similar items or offering, stocking or placing on the market packaging, bearing the infringing sign.

Infringing acts also include importing or exporting goods under the infringing sign, using the sign in a trade name or company name, using the sign in business papers or in advertising and marketing materials or media or using the sign in a misleading way in comparative advertising.

There are various defences to trade mark infringement, these include the use by an individual of his/her own name, the use of a sign in a purely descriptive sense or to indicate the intended purpose of a product or service, such as spare parts. These defences apply provided the use of the sign is in accordance with “honest business practices in industrial or commercial matters”.

The holder of a later registered trade mark will not be liable for infringement, provided the later registration is not likely to be declared invalid on grounds of being too similar to the earlier registered mark.

There will be no infringement by use of a sign that was being used in business in the UK before you used or applied to register your trademark, if that earlier sign would be protected under the law of ‘passing off’.

How can I protect my trade mark from infringement?

Registering your trade mark is a good way to warn others against using an identical or similar mark as you may be able to bring an action against them for infringement.

You should use the registered ® symbol next to the mark once it is registered to show that the mark is owned by you and is in use in business.

It is important to be proactive in enforcing your registered rights against potential infringers. You should draw up an enforcement strategy so that you can take prompt action as soon as you become aware of any infringing use. Sending cease and desist letters and obtaining injunctions when necessary, can stop infringers in their tracks and show that you are serious about protecting your rights.

You should also ensure that your trade mark registrations are valid and kept up to date. If you have changed your address and the wrong correspondence address is noted on the register, you may not be notified of subsequent registration applications for similar marks. Or, if you have not used your registered mark in the past five years’, the defendant in an infringement action may be able to counterclaim for the revocation of your registered mark on grounds of non-use.

A proactive filing strategy is also important, especially where you intend to use your mark abroad or you want to use foreign manufacturers, agents or distributors. Otherwise, you may find that someone has already registered your trade mark in that country and could threaten to bring an infringement action against you if you use your mark there.

What is the difference between trade mark infringement and passing off?

Trade mark infringement of a registered trade mark can constitute both a civil and a criminal offence. The owner of a registered trade mark can bring a claim based on one or more of the infringing acts listed in the Act and simply file evidence to show that the conditions of the Act are met. Provided there is no defence available to the defendant, the claim will succeed and the owner does not have to prove ownership of any goodwill or that the business has suffered any loss as a result of the infringing act.

Passing off is a common law remedy that is available to unregistered trade mark owners. It is more difficult to prove than infringement as the owner of the unregistered trade mark must show that its business has prior goodwill in the mark and has suffered or is likely to suffer damage as a result of the use of the offending sign.

Who can claim trade mark infringement?

The owner of the registered trade mark can bring infringement proceedings. A licensee can also bring a claim in its own name provided that the licence agreement does not prevent this and it is permitted by the trade mark owner.

What can you do if someone in the UK uses your trade mark?

If you have a registered UK trade mark and a third party uses it without your authorisation or commits another infringing act in respect of your registered mark, you can bring an action in court for trade mark infringement. This does not have to be your first and only option.

Normally the first step is to write a cease and desist letter to the third party to draw their attention to your registration and ask them to cease all use of the infringing mark.

You can also include a ‘without prejudice’ offer for settlement if you are willing to enter into negotiations with the third party. This could involve, for example, entering into a coexistence agreement with them to specify how each party may use and register their respective marks to limit any risk of confusion, or asking them to assign their mark to you in return for your licensing its use back to them, subject to any terms and conditions that you specify.

When sending cease and desist letters, you should be careful that your letter does not constitute an ‘unjustified threat’ of infringement, as this can be actionable in its own right, against you. A trade mark lawyer or attorney can assist you in drafting a letter that does not fall foul of these provisions.

If the infringing act is continuing and causing damage to your goodwill and business, then you may need to take more immediate action.

In this case, you can go to the court to ask for an interim injunction to stop the infringing act. You must file a request as soon as possible as any delay can result in an injunction not being granted. These are a discretionary remedy and various conditions that must be met in order for an interim injunction to be granted, such as convincing the court that damages would not be sufficient compensation if the infringing act were to continue. The effect of an interim injunction could be to cause the defendant to stop trading so is a serious remedy.

You can also file ‘take-down’ notices on online marketplaces and platforms such as Amazon, Instagram and eBay to get any content that infringes your registered mark removed from the platform.

A registered trade mark owner or licensee can give notice to Customs & Excise that infringing goods are expected to arrive in the UK and are to be treated as prohibited goods and can be detained and inspected. The goods may be destroyed unless the importer or owner objects and you cannot prove that the goods infringe your registered trade mark rights.

You may ultimately decide to file an infringement claim at the High Court or the Intellectual Property Enterprise Court (IPEC). The IPEC is the preferred venue for smaller and less complex claims and it also has a small-claims track for claims valued at no greater than £10,000.

What are the remedies for trademark infringement in the UK?

If you are successful in an infringement action, the court can award damages to cover loss of profits resulting from the infringement or calculated as the notional licence fee that the defendant would have paid had their use of the mark been licensed. Alternatively, you can recover damages for the notional damage caused to your business’ reputation or goodwill under the registered mark.

A permanent injunction can also be granted following a decision, along with orders for the defendant to deliver up or destroy any infringing goods, packaging or other articles and/or to erase, obliterate or remove any infringing signs from packaging, label or other articles.

The winning party is usually granted a costs award from the losing party, which will normally cover a proportion of the legal costs incurred in the proceedings.

Summary

Guarding against infringement of your trade marks is a continuing battle. Making sure that your mark is registered is the first step but not the last.

As a registered trade mark owner, you must be proactive in monitoring and policing the marketplace to minimise any opportunity for infringers to gain a foothold and if they do, you should take action immediately to enforce your rights and stop any further unauthorised use.

Taking legal advice from the outset will enable you to draw up an effective and proportionate enforcement strategy and develop a system to deal with potential infringements and dissuade infringers from targeting your brand.