What is a trade mark?

A trade mark, under UK law, is a distinctive sign or symbol that is used by an individual or business to identify and distinguish their goods or services from those of others. Trade marks can take various forms, including words, logos, slogans, shapes, colours, sounds, or a combination of these elements.

The primary purpose of a trademark is to enable consumers to easily recognise and associate products or services with a particular source.

Businesses and individuals should seek to register their trade mark. By doing so, they gain exclusive rights to use their mark in connection with specific goods or services within the jurisdiction where the trademark is registered.

In the United Kingdom, the registration and protection of trademarks are governed by the Intellectual Property Office (IPO).

The registration process typically involves submitting an application, which is then examined to ensure it meets the legal requirements for registration.

Once registered, the trademark owner has the right to take legal action against others who use a similar or identical mark for similar goods or services without permission.

It’s important to note that unregistered trademarks may still be protected under common law rights, but registration provides additional legal benefits and a stronger foundation for enforcing those rights.

Trademark law aims to prevent confusion among consumers and protect the reputation and goodwill associated with a particular brand or business.

What is trade mark infringement?

Trademark infringement is a situation whereby another party uses a trademark that is identical or similar to a registered trademark for similar services or goods for sale ( in the course of trade) without the authorisation of the trademark owner.

This unauthorised use can lead to confusion among consumers, potentially harming the reputation and could be detrimental to the distinctive character of the goods or services. Trademark infringement is a violation of the exclusive rights granted to the registered trademark owner.

Key elements of trademark infringement include:

• Use of a similar or identical mark: The alleged infringer uses a trademark that is either identical or sufficiently similar to the registered trademark. The similarity of the infringing mark is often assessed based on visual, phonetic, and conceptual aspects of the marks.
• Similar goods or services: The unauthorised use occurs in connection with goods or services that are similar or related to those covered by the registered trademark. The likelihood of confusion is a crucial factor in determining infringement.
• Likelihood of confusion: The use of the similar or identical mark is likely to cause confusion among consumers regarding the source of the goods or services. This confusion can include a mistaken belief that the products or services are affiliated with or endorsed by the original trademark owner.
• Registered trademark: Trademark infringement typically involves a registered trademark. However, even unregistered trademarks may be protected under common law, and an infringement claim could still be pursued based on common law rights.

Trademark infringement is a civil offense, and the trademark owner can initiate trademark infringement proceedings to stop the infringing activities and seek remedies. These remedies may include injunctive relief, damages, and legal costs. The infringement cases are often resolved through negotiation, mediation, or, if necessary, litigation.

Legal proceedings

Trademark infringement proceedings are legal actions taken by a trademark owner against an alleged infringer to enforce their exclusive rights to a registered trademark. Below is an overview of the typical steps involved in trademark infringement proceedings:

Pre-Litigation Steps:

Cease and desist letter: Before initiating formal legal proceedings, the trademark owner may send a cease and desist letter to the alleged infringer. This letter outlines the alleged infringement, demands the cessation of infringing activities, and may include a request for compensation or other remedies.

Court proceedings:

If the pre-litigation steps do not resolve the matter, the trademark owner can file a lawsuit in the appropriate court. In the UK, trademark cases are typically heard in the Intellectual Property and Enterprise Court (IPEC) or the High Court, depending on the complexity and value of the case.

Claim Form and Particulars of Claim:

The trademark owner will then be required to file a claim form and particulars of claim, outlining the legal and factual basis for the infringement allegations. This document is served on the defendant, who then has an opportunity to respond.

Defendant’s response:

The defendant has the opportunity to file a defense responding to the allegations. They may admit or deny the infringement and may raise legal a defence to trademark infringement or counterclaims.

Interim injunctions:

During the proceedings, either party may apply for interim injunctions to stop the alleged infringing activities until the court makes a final decision. Interim injunctions are intended to prevent further harm during the legal process.

Discovery and evidence gathering:

Both parties engage in the discovery process, exchanging relevant documents and information. They may also present evidence, including witness statements and expert testimony, to support their respective cases.

Trial:

The case may proceed to a trial, where both parties present their arguments and evidence before the court. The court will assess the facts, legal arguments, and relevant law to determine whether trademark infringement has occurred or not.

Judgment:

• The court issues a judgment, deciding whether there is trademark infringement and, if so, what remedies are appropriate. Remedies may include injunctive relief, damages, account of profits, and costs.

Appeals:

• Either party may have the right to appeal the judgment to a higher court if they disagree with the outcome.

Trademark infringement proceedings can be complex, involving legal and factual assessments, and the outcome depends on the specific circumstances of each case. It is common for parties to engage in settlement discussions at various stages of the proceedings.

How can ARC Costs assist?

ARC Costs maintains an extensive legal network of expert commercial litigation solicitors with a track record of success on these types of cases, and we would be happy to pass on your details to assist in your case. 

Following any type of legal dispute, legal costs are likely to be an issue. ARC Costs can assist in your legal costs case whether you are the paying party or the receiving party to commercial litigation.

ARC Costs are highly experienced in advising and assisting with costs issues and disputes in different areas of law. As Costs Draftsman and Costs Lawyers, we can assist in your Commercial Litigation Costs issues.

If a costs award has been made, allowing you to recover costs from your opponent, we can assist with preparing a Bill of Costs on your behalf to ensure maximum recoverability. We can also assist in Costs Negotiations and represent you at detailed assessment proceedings which can determine the amount of costs you may be able to recover.

If you have been ordered to pay costs to your opponent, we can assist in disputing costs which may be sought and which you may deem to be excessive and unreasonable.

We can do this by way of preparation of  Points of Dispute and also through negotiations to ensure you will only pay for costs which are reasonably incurred and not exaggerated.

Contact us today to find out how we can assist on your case.