Being accused of trade mark infringement is serious and can have significant consequences for you and your business. Be aware that not every claim is valid, legally sound, or backed by proper evidence. Even if the claim has merit, you may have a legal defence or be able to settle it without going to court.
In this article, Ben Evans, Head of Trade Marks at Harper James, sets out the steps to take if you receive a trade mark infringement claim and the key points you should consider.
Is it a legitimate trade mark infringement claim?
Not every trade mark claim is genuine. Some are made without a solid legal basis, often in an attempt to pressure businesses into making unnecessary payments. When you receive a claim, the first step is to check whether it’s valid.
You should seek legal advice as soon as you receive a claim. A trade mark solicitor can assess the claim, explain your options, and help you plan your next steps.
While waiting for legal advice, gather information about your position. Start by checking:
Is your trade mark registered?
Is the registration valid, up to date, and does it cover the goods and services you offer?
Can you prove when you first started using your trade mark?
Do you know when the claimant began using theirs and was this after you?
Can you find evidence of them trading from the date they claim?
You should also review any licences, permissions or agreements that give you the right to use the trade mark. If you acquired it as part of a business purchase, check whether the transfer of the mark and goodwill was properly covered in the agreement. If you are using the mark under licence, confirm that you have a valid, signed copy of the licence agreement and that the licensor still legally owns the mark.
Finally, make sure you can prove your products are genuine. Keep clear product descriptions, photographs of your items, and details of any unique features that help distinguish your goods from counterfeits. This might include holograms, bespoke packaging or unique barcodes. If your products rely on a particular composition, ingredient or specification, expert reports or test results can also help confirm their authenticity.
Is there a time limit for you to respond to a trade mark claim?
You must stick to any deadlines set by the claimant. If a court or tribunal is involved, you could face additional costs or harm your case by missing important deadlines. So, check any letters or documents carefully and note down key dates.
Are there steps you can take to limit the damage?
Before fully assessing the claim, it’s sensible to pause some business activities linked to the trade mark. For example:
If the product in question is still for sale online, consider removing the listing until you understand your position.
Let any third parties using your trade mark under your authorisation know they should pause use too.
If someone is supplying you with counterfeit products under your business name, stop further deliveries while you investigate.
How do I respond to a trade mark infringement claim?
You will need to respond to the claim in full, but only after you’ve thoroughly investigated it and taken legal advice.
Your first response might be a simple acknowledgement. Confirm receipt of the correspondence, explain that you are seeking legal advice, and state that you’ll respond fully within the given deadline. If the deadline is very tight (less than 14 days), you might be able to request an extension.
When you respond fully, you may need to:
Dispute the claim and request evidence to support the allegations.
Set out any valid defences you have and supply supporting evidence.
In some cases, file a counterclaim to challenge the claimant’s own trade mark use or registration.
How long does it take to resolve a trade mark infringement dispute?
This depends on the nature of the case, the size and nature of the businesses involved and their relative bargaining powers and whether any external bodies are involved, such as the Courts or Registries.
If you can negotiate a compromise or coexistence agreement, you might resolve the dispute fairly quickly. Often, this means making simple adjustments to your trade mark use to avoid confusion between your business and the claimant’s.
If the dispute goes to court, be prepared for it to take much longer. Managing your expectations will help you stay proactive and avoid frustration. Factor in the time and potential disruption to your business when deciding how to proceed.
How can I protect my business moving forward?
The best way to avoid future problems is to take sensible, proactive steps before you start using a new trade mark.
Start with a trade mark clearance search. This means checking national and international trade mark databases to see if your proposed name, logo or sign is already registered. It’s important to do this before you begin trading or apply for a trade mark registration. A proper search helps you spot potential conflicts early and avoid problems later.
It’s also worth carrying out some simple commercial checks. Look online to see if any other businesses are already using a similar name or brand. Check domain names, Companies House records and business directories. These checks are quick and can highlight obvious risks.
Once your trade mark is in use, put clear brand guidelines in place. Make sure everyone in your business and any contractors or partners you work with understands exactly how your trade mark should be used. This reduces the risk of mistakes and protects the strength of your brand.
You should also keep your trade mark registrations under regular review. Make sure you know what trade marks you own, what goods and services they cover, and where you have protection. As your business grows, you may need to update your registrations or register new marks for new products, services or markets.
Taking these simple steps now will help protect your brand and reduce the chance of problems in future.
Summary
Receiving a trade mark infringement claim is not always as bad as it first seems. Keeping good records, including evidence of your trade mark ownership and use of your marks where will strengthen your position if a claim arises.
Most importantly, seek legal advice early. It can help you resolve the matter quickly, minimise losses and help you get back to running your business.
Read more:
You have been accused of trade mark infringement – now what?
