Registering your trade marks is an important step in protecting your brand – but maintaining and enforcing those rights is equally critical. If another business uses your trade mark without permission, especially if your brand is well-known, the consequences can be serious. Infringement can dilute your reputation, cause consumer confusion, and reduce profitability. Swift action is essential.
Below, we explain how trade mark infringement occurs and the steps you can take to protect your business.
Why Protecting Your Trade Mark Matters
In today’s fast-moving, highly competitive market, driven by online commerce and global reach, trade mark infringement is increasingly common. Sometimes it’s intentional, but often it’s accidental. Regardless of the cause, failing to enforce your rights can weaken your brand and its exclusivity.
Inaction may harm your goodwill and long-term commercial position and you may even permanently lose legal rights. Understanding your options gives you the best chance of stopping misuse quickly and effectively.
Registering Your Trade Marks
Where possible, you should register your trade marks with the UK Intellectual Property Office (“UK IPO”). (This article focuses on UK trade marks only).
Registered trade marks offer several key advantages:
- No need to prove goodwill: Unlike actions for passing off, you don’t need to show that your mark has built up a reputation.
- Potential notice of conflicting applications: If someone applies for an identical or similar mark later, the UK IPO may alert you during the opposition period.
- Eligibility to oppose or challenge conflicting marks: An existing registration gives you clearer and stronger grounds for objecting to the registration of competing marks by third parties.
Because IPO notifications are not guaranteed, we strongly recommend using a trade mark watching service. This service monitors new applications year-round and alerts you to potential conflicts early.
Gathering Evidence of Infringement
Before taking action, collect and preserve all relevant evidence, including:
- Where, how and since when the competitor has been using the mark.
- Screenshots and dates of each instance of infringement.
- Examples of consumer confusion, if any.
- Copies of packaging, marketing materials or product similarities.
This information strengthens your position and helps your solicitor assess your options. Avoid contacting an alleged infringer directly without legal advice to minimise the risk of making “unjustified threats.”
Your Legal Options
If you decide to challenge the infringer, you typically go through two phases:
1. Cease and Desist Letter
The first step is usually a formal cease and desist letter requiring the infringer to:
- Stop using the infringing mark immediately.
- Destroy or remove all infringing products, packaging or digital materials.
- Confirm compliance in writing.
- Compensate you for any losses, where appropriate.
Many disputes settle at this stage through negotiation. In some cases, a co-existence agreement may be suitable.
2. Court Action or UKIPO Proceedings
If settlement is not possible, you can consider:
a. Court proceedings
You may bring a claim under the Trade Marks Act 1994 for:
- “Classic” infringement: using an identical or confusingly similar sign for identical/similar goods or services, creating a likelihood of confusion.
- Reputation-based infringement: where your mark has a UK reputation and the infringer takes unfair advantage of or harms its distinctive character.
b. UKIPO challenges
If the infringing mark has been applied for (or already registered), you can seek to challenge it through the UKIPO by:
- Opposing a pending application.
- Applying to cancel a registered mark.
- Applying to revoke a registered mark (e.g., for non-use over a 5 year period).
- IPO proceedings are separate from court action.
Factors to Consider Before Pursuing Action
Before recommending formal action, we will assess:
- Whether infringement has occurred under Section 10 of the Trade Marks Act 1994.
- Strength of your claim, including priority of use and whether your own mark has been used within the past 5 years (to avoid vulnerability to non-use cancellation).
- Possible defences the other party might raise (e.g. honest concurrent use).
- Most disputes settle well before trial, often through Alternative Dispute Resolution.
Why Enforcement Matters
Your trade marks are the face of your business. Enforcing them:
- Protects your brand value and reputation.
- Deters “copycat” competitors.
- Enhances consumer trust.
- Allows you to use the ® symbol.
- Gives you stronger rights than unregistered marks.
- Active protection keeps your brand strong and recognisable.
How We Can Help
We specialise in Intellectual Property law and can assist with monitoring, protecting, and enforcing your trade marks. For further insights on trade mark law and how to protect your intellectual property, please contact Wing Ming Choi at wingming.choi@culbertellis.com or call +44 (0)203 987 0222.
Accurate at the time of writing. This information is provided for general information purposes only and should not be relied upon as legal advice.
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