Stopping people from using your trade mark

A registered trade mark gives the owner the exclusive right to prevent others from using a similar or identical mark in respect to the designated goods or services. If someone is using a similar or identical mark, to the registered trade mark, an action of trade mark infringement for unauthorised use of the mark may arise.

Research should be done to establish the extent of the infringing acts. If someone is using your trade mark on their website, screenshots of the mark would demonstrate the extent of the infringing act.

The identity of the infringer should be established, with an assessment to whether permission to use the trade mark has been granted. It should be noted that there are defences to trade mark infringement, for example, the Trade Mark Act 1994 states that a registered trade mark is not infringed by the use of a person of his own name.

When the extent of the trade mark infringement has been established, the risks of perusing the infringement should be weighed up.  If there is an unjustified threat of trade mark infringement, the person aggrieved by the threat may bring proceedings for relief. This could include damages for any losses that may have occurred as a result of the threats.

Communication with the infringer for the first time should be a notification to your intellectual property rights in the trade mark. Caution should be exercised as it is possible for a notification to give rise to a groundless threats claim.

The first step of litigation is a letter of clam. The grounds of the complaint should be set out, with the letter being compliant to the Civil Procedure Rules.

Proceedings may be issued, however an analysis should be made to determine the prospect of success. A budget should be calculated and the risks weighed up.  Proceedings may be necessary where the infringer is causing serious damage to the brand, an emergency injunction if successful will bring an immediate stop to the infringing activity.

Alternative means of dispute resolution should be considered, negotiation or mediation may result in a quicker and more cost effective settlement.

If you find that someone is using your trade mark without consent, please do not hesitate to contact the Trade Mark Room for advice. 

By Sam O'Toole