Does your Branding leave a Mark ?

1st May 2017

The brand values attached to the trademark of a business are key elements to how it performs. They help gain customer preference over rival companies and provide convincing reasons why customers should buy a product or service rather than competitors. It provides direction and focus on how a company is perceived in their target market set against the alternatives on offer.

Trademark Infringement

What does your brand say about your customers and how do they feel about that?

Most companies strive to achieve a singularity to their name – they want to attract a certain sector of the market and believe that customers build an affinity to their name, be it for price; exclusivity; quality; customer service or a combination of each. A business will strive over many years to build a reputation and customer perception to aid sales in a competitive market place, so if a rival company uses a similar name or implies a link, then they will defend it vigorously. With the growth of start up, on line businesses, the lines become increasingly blurred and are ever more difficult for a firm to police.

The first thing to note, when dealing with the potential infringement of a trademark, is to ensure that the trademark been registered. If this is the case then the trademark will be an official, registered trademark which will confer various rights on the owner of the mark. One of the rights conferred to the owner of a trademark under the Trade Marks Act 1994 is the right to prevent unauthorised use of that trademark by third parties in respect to the goods or services specified on the register. Furthermore the European Union law Agreement on Trade-Related Aspects of Intellectual Property Rights states that the owner of a registered trade mark has the exclusive right to prevent all third parties from using the similar signs for goods or services which are identical or similar to those for which the trademark is registered.

One of the key elements in order to establish whether the use of something has been authorised to establish whether the owner of the mark has in fact consented to the use of the mark. If there has been no consent the third party will not be authorised to use it. As is the case with various other aspects of Intellectual Property Law the owner of a trademark can license or even the sell the authorised use of it to third parties.

Trademark infringement

In order to establish that there has in fact been a trademark infringement the following must be established:

  • That the mark was used in the course of trade or business
  • That the use falls within one of the infringing acts prescribed by the Trade Marks Act In the course of trade. In the past few months, we have been instructed on an increasingly regular basis by businesses concerned about trademark infringements taking place. Sometimes it is a calculated decision to use the trademark, other times it is quite unwitting and can be dealt with swiftly and simply.

I was approached recently by a company who believed their trademark rights were being infringed by a high profile on line retailer – after reviewing the situation it was obvious they had case. After correspondence between all parties, the matter was brought to a satisfactory conclusion for my client within a few hours, as the product was withdrawn from sale

It’s a busy time of year in the retail industry, with companies trying to steal a march on their competitors, so it pays to be vigilant and act quickly.

A major strength of the litigation department at Rogers & Norton is our ability to adapt and act quickly in changing situations to support clients. If you have any concerns about a company infringing on your brand or trademark then contact Peter Hastings.

Our clients are local, national and international and recently the team acted on Anglian Windows Limited v Anglian Roofline Limited [2014] EWHC 4204 (IPEC) – a successful interim injunction application in the IPEC in relation to trade mark infringement and passing off.