Legal/Finance
Chris Felton, the business dispute resolution partner at Gardner Leader Solicitors, provides some tips on protecting trade marks through the following scenario.
Q. I have recently formed a marketing company and have invested a lot of time and money publicising its brand and image. I have just received a letter from another company stating that I have illegally used our logo and have infringed its trade mark. What does this actually mean?A. A trade mark may be a word (or words), a logo or a colour. It may be the shape of your products, or their packaging.
Essentially it is anything which is capable of distinguishing your business, its products and/or services from other businesses.
It is essentially ‘a badge of origin’ and can be protected.
Q. So how do I know or find out whether their logo is protected?
A. There are two ways you can protect a trade mark. The first is through court action for “passing off”, which applies if you can prove the following:
n That the ‘goodwill’ in your business is associated with that trade mark.
n That another business ‘passes off’ its products as being yours and misrepresents in some way, either deliberately or innocently, that its products or services are yours or that you are in some way connected to it or you have endorsed its goods and services.
n That following this you can show that you have or are likely to suffer financial loss as a result of such use.
Q. Well I don’t think that can apply as the other business offers entirely different products and services to mine. What about the second method of protection?
A. Statutory protection under the Trade Marks Act 1994 can be sought by registering the trade mark at the UK Trade Marks Registry.
A registered trade mark in the UK is infringed by the use of the same or similar sign in relation to the same or similar goods and services for which the trade mark is registered.
Unlike in a ‘passing off’ claim, if you hold a registered trade mark, there is a presumption that the trade mark registration is valid, so it will be harder for you to say you have not infringed.
Also, if you register your trade mark as a United Kingdom Trade Mark Registration, your rights will cover the whole of the UK, whereas ‘passing off’ claims are more limited by geographical factors.
Q. So if the other business has not registered the trade mark, I need not worry?
A. Not necessarily, and for the reasons given above it makes good sense to register your trade mark. Although you do not have to register a trade mark to use it, Trade Mark Registrations are designed to stop others using the mark.
Therefore, although they are not a prerequisite for use, it is possible that if you do not register your trade mark, other businesses could stop you using it at a later date.
Q. Any practical tips?
A. Always conduct a search of the Trade Mark Register to determine if others have registered the same or similar mark.
This could prevent your use of a protected trade mark and avoid the time and expense of promoting or marketing it, not to mention the price of potentially costly legal action for infringing.
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