CLARE’S LEGAL LAIR
CLARE’S LEGAL LAIR FMCG News’ resident lawyer, Clare Thomas, is here every issue to make sure you stay on the right side of the legal track when operating in the industry
Hi readers. In the last issue, I discussed the importance of protecting a new brand. This column looks at how to defend your brand against others who tread on its toes. It's one of the most important assets a business can have, so it's worth defending!
regular internet searches to see if any similarly branded products have come on to the market. If you have registered trade marks, instruct a trade mark attorney to carry out a "watch" service for you, so that you are notified of applications for marks which may be confusingly similar and you can take a view on whether or not to oppose their registration. If it comes to your attention
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that your registered UK or Community trade mark is being "infringed" by another in the course of trade and without your consent, your right to a legal remedy will depend on whether the marks are identical or similar, and whether the goods are identical or similar in type. It may require a "likelihood of confusion" on the part of trade customers and end consumers. The table (below) sets this out in more detail. A word of warning though - be
aware of making "unjustified threats" of trade mark infringement, which could result in a claim
against you, and take advice from a trade mark attorney or solicitor before approaching the infringer. If you do not have marks
registered you can sue for "passing off", but will need to demonstrate your business's goodwill. You also need to show the confusion that has been caused. Retain any evidence of that (such as letters or complaints from customers) - it will be valuable in subsequent proceedings. Brand names and logos can be
REQUIREMENTS TO SHOW TRADE MARK INFRINGEMENT Identical sign
Identical sign Similar sign
Identical or
+ + +
+
Identical goods Similar goods Identical goods
or similar goods Any goods
+ +
+
Likelihood of confusion Likelihood of confusion
Registered mark has a reputation similar sign reputation + use is without cause + takes unfair advantage/is detrimental distinctive character/repute of mark
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registered as trade marks, but protecting the copyright in packaging is harder. As copyright is not registrable, make sure you have records to demonstrate your brand artwork is original and when it was created. To succeed in a claim, you need to prove actual copying. Third parties are not entitled to
register domain names which use your intellectual property so look out for those, for example by carrying out an online "Who is" search. Nominet (.uk domains) or WIPO (for
others) provide cost effective dispute resolution procedures. If comparative advertising may
be an issue, consider a complaint to the Advertising Standards Authority. Take practical steps to protect
your brand – use Google Analytics and other free tools to police your brand online and collect and store evidence before making a complaint. You should also consider what you want to achieve (specific action, cash payment, the grant of a licence or just a take down from a website) and know your opponent. Most importantly, know when to make a legal threat and when not to, as litigation can be extremely costly, even for the winner.
Clare Thomas is Partner at law firm Addleshaw Goddard LLP, where she heads up the firm’s food & drink team. For more information, visit
www.addleshawgoddard.com.
irstly, keep an eye out for potential unauthorised use of your brand. Carry out
Once trade marks have been assigned, it’s
importance to be vigilant against any copyright activity that could damage your brand
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