I have received notice that I am using someone else’s trade mark, what do I do?

First of all it needs to be established what your position is.

If you are using a mark that is registered by someone else then it is very likely they will want to instigate an action for infringement.

However if you are also using a mark that has been successfully registered at the UK Intellectual Property Office, timing needs to be considered. If your mark has been registered before the other mark, then you in fact may have a case against them. If their mark was registered before yours, they may have a case against you.

As a general principle, a mark’s application will be refused if it is identical/similar to a mark already registered. Therefore, any mark should not be registered if there is an existing mark that is conceptually similar. However, there may be a few that has slipped through the net. This is rare.

Ultimately, the other party will be looking to action a case of infringement. The letter you received may be a cease and desist letter which gives a warning to stop infringing activity before any further action is taken.

If a case of infringement is brought against you, there are a number of elements for you to be aware of. A mark can infringe if it is identical/similar to one already registered in a similar class of goods and services. Therefore if you are on the receiving end of a claim for infringement, you need to be sure you will not be caught by this if you wish to continue trading under the mark in question.

If you are sure you will be successful in fighting the claim of infringement after gaining legal advice, then you are free to carry on using the mark. However, it is best to cease trading as soon as you receive the original cease and desist letter to prevent any further problems and expenditure.

The key bit of advice would be before you start trading using a trade mark, consult The Trademarkroom to complete a trade mark search for you to ensure there is not any other marks registered that you may infringe.

By Ellis Sweetenham