Trademark disputes are something no one wants to get involved in, but sometimes, they can be unavoidable. Trademark infringement can be daunting and complex, yet it's important to understand, particularly for business owners and entrepreneurs.
In today's competitive market, protecting your brand is essential, and trademark disputes can arise suddenly, potentially causing significant damage to your business.
In this article, we’ll explore what you need to know about trademark infringement, including what constitutes a trademark infringement, leading to the likelihood of confusion between brands, the potential consequences, and what steps you can take to protect your brand and minimise your risk.
Whether you're a startup, an established business, or an individual with a creative idea, understanding trademark infringement is crucial for safeguarding your intellectual property and ensuring your long-term success.
What is trademark infringement?
A trademark infringement occurs when a person or company uses an existing registered trademark without obtaining the owner’s consent. The sign being used must be identical or similar to the registered mark and promote services and goods for sale that are identical or similar to those sold by the registered trademark owner. The registered trademark owner must prove that the defendant’s improper use could confuse consumers.
Large corporations can be extremely aggressive when pursuing trademark disputes. For example, in 1996, McDonald's forced the owner of a Buckingham-based eatery to drop the name ‘McMunchies’ even though the proprietor didn’t sell burgers or chips. McDonald's argued that anyone using the prefix ‘Mc’ in a commercial context, even non-intentionally, was using something that didn’t belong to them.
However, McDonald's has recently lost its exclusive claim to the "Mc" trademark on some of its food products within the EU after the European Union Intellectual Property Office (EUIPO) ruled in favour of the Irish food chain Supermac’s, stating that McDonald's hadn’t proved genuine use of the ‘Mc’ prefix on some of its products or services.
How to deal with trademark infringement?
If you’re considering bringing a trademark infringement claim, be aware that one of the common responses from the defendant is to counterclaim that your trademark should be cancelled or revoked.
They may argue that your trademark needs to be more descriptive or misleading or hasn’t been often used in the last five years (which would make it liable to cancellation). Another defence to trademark infringement is that the infringing mark had pre-existing rights to the mark, and your application shouldn’t have been approved.
How to prove trademark infringement?
It can be hard to prove a trademark infringement. Therefore, it’s well worth taking advice from an intellectual property lawyer to check the merit of your claim and the risk of being exposed to paying the other side’s costs if you lose the case.
Is trademark infringement a criminal or a civil offence?
A trademark infringement can be both a criminal and a civil offence. Section 92 of the Trade Marks Act 1994 provides that it is a criminal offence to use, without the proprietor's consent, a sign identical to a trade mark or likely to be mistaken for that mark to make a gain or to cause a loss.
Where to file a trademark infringement case?
Claims for trademark infringement can be made to the High Court, the Intellectual Property Enterprise Court, and the County Courts at Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester, and Newcastle.
An IP infringement small claims (up to £10,000) track is available in the Intellectual Property Enterprise Court for straightforward claims. However, although you can receive an order for an injunction, interim injunctions (preventing the defendant from continuing with the alleged infringement whilst the case is being heard) aren’t available.
Usually, cases referred to the small claims fast track are resolved through mediation or other Alternative Dispute Resolution (ADR) methods.
Get legal assistance from LawBite
Trademark law can be challenging to navigate. Our expert intellectual property lawyers can assist you with your goods or services trademark registration to avoid any intellectual property disputes during the course of trade. Seeking trademark advice from an expert trademark solicitor is usually the first step to understanding trademark protection within the context of your brand. The trademark solicitors at LawBite can help with all aspects of this process.
At the pre-filing stage (this includes advising which of your brand elements can be registered), we can advise whether there are already similar marks classing you should cover and carefully help draft a bespoke specification to reflect your business model. We can then file the application(s) on your behalf and monitor the entire process through to registration, liaising with the trademark office as and when necessary.
The trademark advice we offer at LawBite also extends to handling third-party trademark infringement claims, whether defending your trademark in the context of opposition proceedings or pursuing somebody who’s breaching your rights by expediting a cease and desist letter. This includes expert business legal advice and recommendations about strategy and negotiations, as well as drafting pre-action correspondence and formal statements of the case.
LawBite offers very competitive trademark legal advice and packages. Our trademark solicitors can recommend the most cost-effective way of getting your trademark protected. To learn more about how we can assist you, book a free 15 minute consultation with one of our expert lawyers or call us on 020 3808 8314.