A trade mark is a form of intellectual property used to distinguish the goods/services of one undertaking from those of another. A trade mark can be words, logos or a combination of both. The term is often called a ‘brand’.
Trade marks may be registered or unregistered. From a day to day perspective, the difference may not be evident but, when it comes to enforcement, the difference can be significant.
The “TM” symbol means that the mark is being used as a trade mark. The ® symbol means that a trade mark is registered. Use of the latter symbol on a trade mark which is not registered constitutes a criminal offence.
Registered Trade Marks
A registered trade mark is infringed if someone uses a mark which is similar or identical to the registered trade mark for goods or services which are similar or identical to those for which the registered trade mark is registered.
If both the mark and the goods or services are identical, the case is relatively clearcut. If, however, the mark and/or goods or services are only similar, there must be a demonstrable likelihood of confusion on the part of the public.
In certain circumstances, if a registered trade mark has a reputation in the UK, another mark which is identical or similar to it will also be deemed to be infringing it irrespective of the similarity of the goods or services if it takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered trade mark.
Unregistered Trade Marks
Trade marks do not necessarily require registration in order to be protected. If unregistered, the common law action known as “passing off” can be used to protect the mark.
To be successful in a “passing off” action:
– your trade mark must be established and must have acquired a reputation in the view of the relevant section of the public;
– the infringing trade mark must have been (or is likely to be) confused with your trade mark; and
– your business must have been (or is likely to be) harmed by the use of the infringing trade mark.
Considerable evidence is often required to prove the three elements set out above. Consequently, pursuing a passing off action can be extremely costly. It is often simpler and more cost-effective to register your trade mark as opposed to relying on the common law alternative.
If you come across a third party who is infringing your trade mark, it is often worth contacting (after gathering your evidence) the infringer. That is, try to resolve the situation directly prior to getting lawyers involved.
A cease and desist letter is usually the best means of contact which should, as a minimum, set out:
your ownership of your trade mark (whether registered or not);
your allegation of infringement;
the requirement to cease and desist the infringement; and
a deadline for the recipient’s acknowledgment and response.
If the infringer disputes your claims, there may still be an opportunity to resolve the matter privately simply by discussing it. If not, or if discussions fail, the parties could turn to some form of alternative dispute resolution prior to incurring the considerable time and expense associated with taking the matter to court.
A trade mark co-existence agreement is another option. Under a trade mark co-existence agreement, a party with an established (and usually registered) trade mark enters into a series of mutual undertakings with a party that is seeking to establish a new trade mark. The agreement will enable both parties to continue using their trade marks. Often, the established party may require limited alterations either to the new party’s trade mark or to the classes of goods and/or services to which they plan to apply that trade mark.
If none of the above attempts at a resolution have succeeded then it may finally be time to seek legal advice on an action for infringement. Trade mark owners may obtain relief which may take the form of damages, injunctions or an account of profits.
This should not be relied upon for legal advice. If you would like any further information or advice please email firstname.lastname@example.org.