Whether your business is suffering because of counterfeit goods, another business is challenging your trade mark, or you think your trade mark rights are being infringed in the UK or abroad, there are actions you can take to defend your brand.
You may want to take out a trade mark opposition or infringement action, need to manage a claim against your brand, or deal with a revocation. Whatever the issue, the right advice can help you avoid dilution of your brand and attacks on your intellectual property.
An action for trade mark infringement is when one party has a registered trade mark and claims its rights are being infringed by another party’s actions, whether the other party has a registered trade mark or is trading only with unregistered rights.
If you think a third party is infringing your trade mark rights, whether registered or unregistered, there are a variety of remedies that may be available to you in pursuing trade mark infringement, passing off or unfair competition. Our Trade Mark Agency experts can advise on the options available to you and help you with any actions you want to take.
Similarly, if you have been contacted by a third party who says you are infringing their intellectual property rights, trade marks or are passing off on their brand, our team of experts can offer assistance on how to manage the claim.
Once the Intellectual Property Office has accepted a trade mark application, it is published in the trade marks journal for a period (two months in the UK, three months in the EU) before it is granted full registration. This period allows third parties to oppose the application if they think it negatively affects their business or infringes their trade mark.
If someone has opposed your trade mark, we can assist in helping you understand the options which are available to you, as well as drafting defences and working towards a scenario which you are comfortable with.
If you are concerned that someone has applied for a trade mark which you feel is too similar to your trade mark, we can help you oppose the mark in the best way.
And if the opposition window has closed and the mark is already registered, there are options open to you, which we can help you with, such as infringement actions or invalidation and revocation.
A counterfeit is any product which is made so that it gives the impression of being the product of another company. Typically, luxury brands are more vulnerable to counterfeit products as the market price for a ‘real’ product can be quite high. Counterfeits can be produced at a fraction of the recommended retail price for the ‘real’ product and some are extremely realistic.
Counterfeits are the source of many trade mark revocation actions. If the trade mark is declared invalid, the counterfeiter cannot be said to infringe the trade mark. Counterfeit products have been an existing problem for our clients who operate overseas for a number of years. However, recently, we have been seeing more counterfeit issues arise in the UK.
If you are worried about your goods being vulnerable to counterfeiters, we can advise on international trade mark protection strategies, as well as assist in bringing actions in the courts to stop the products being available for sale. We can also offer advice on how to prevent goods from entering the UK by registering your brand with HMRC and Customs.
As you might expect, the length of time it takes to resolve a matter depends on how complicated the matter is. However, at Thorntons Trade Mark Agency we recognise that you are keen to resolve the issue as quickly and cost-effectively as possible and will work with you to find a practical solution that works for you.
There are strict rules on when you can accuse another party that they have infringed your rights. If these rules are not followed exactly, you may be vulnerable to a claim of unjustified threats.
The essence of this legal claim is that by throwing accusations about how a brand may or may not be used, there is the risk of causing a huge amount of disruption, stress and loss to the recipient if the claims are actually unjustified and without cause.
In pursuing infringement actions relating to your brand, we can help to ensure that you are not exposed to such a claim and that we work together to resolve your branding issue quickly and pragmatically. If you have received a letter or email from a third party, claiming that you are infringing their rights, it might be that you have a claim for unjustified threats. Our team of experts can advise you accordingly and offer advice to cause the minimum level of disruption to your business.
Yes. If a third party is using your brand in such a way that it is causing customer confusion and you are worried about the third-party use damaging your reputation or diluting your brand, one remedy might be to seek an interdict, where you get a court order to stop the other person from trading under that name.
These can be granted through the commercial courts and can be very quick to obtain. We deal with all contentious matters relating to brand protection and intellectual property, with experts specialising in contentious intellectual property, as well as maintaining close relationships with our colleagues in litigation to deliver a complete service to clients.
Invalidation is the relevant action if, in the applicant’s opinion, a trade mark should never have been granted. This could be because the trade mark application was made in bad faith or because the trade mark is for a term commonly used in the industry and it is felt all in the industry should be free to use it.
If you have received an invalidation notice, contact our team of experts, who will be able to offer advice on the options available to you and to assist with defending the action if that is your preferred route.
Equally, if you are aware of a trade mark registration that affects your business and you believe it was granted erroneously, please contact our experts.
Revocation is the action if a third-party trade mark has been granted but has not been used for five consecutive years.
If you have received a revocation notice, our Trade Mark Agency will be able to help, with practical and commercial advice on your options and business protection strategies.
Similarly, if you are aware of a registered trade mark that affects your business and you are of the view that the mark has not been used for the relevant goods or services in the last five consecutive years, please get in touch with our Trade Mark Agency, where one of our experts will be able to advise you on the options available to you.
As you might expect, the cost of stopping someone from infringing your trade mark depends on the circumstances. Sometimes, a single cease and desist letter is enough to stop a third party from infringing your trade mark. In other cases, the process can go on for some time and the parties may disagree on a number of elements, including who has the better right to make use of a name or whether the second mark is confusingly similar to the first one. In this situation, the costs can be higher. However, we always stress the importance of looking after your brand and ensuring that its value is not confused or diluted by a third party.
We set out our fees and likely extra costs for you at the start and keep you informed of any possible changes as your case progresses.
Call us on 03330 430 350 to find out more about our brand enforcement and protection services or for assistance with a specific infringement action. Alternatively, make an enquiry online and one of our Trade Mark Agency team will contact you.
Our Trade Mark Agency team have significant experience in trade marks and branding law, both in the UK and abroad, and can handle all aspects of trade mark enforcement and protection for you. This includes raising and defending oppositions to trade mark applications, pursuing trade mark infringement actions, dealing with unjustified threats claims and offering advice on all elements of contentious trade mark matters, in the UK and internationally.
In all cases our team of experts are able to give you practical advice on the best way to resolve the issue for your business and support you throughout the proceedings.