SPECIAL REPORT
official registration system. The IPO spokesman told us: “T shirt printers can find out if a slogan has been trademarked by using our online search system. With copyright, if the image being printed is not original, ie: being copied without the express permission of the creator – then the copyright of the creator is being infringed. The following pages on our website may be of help with your specific query:
http://www.ipo.gov.uk/t- protect-passingoff.htm.”
According to the IPO, you can use ʻTMʼ to show that something is being used as a trade mark, even if it is not registered. You can use the ® symbol to show that something is a registered trade mark. This could mean that the mark is registered in the UK or abroad. But do not use ® on a mark that is not registered, because it is a criminal offence to do this in the UK. Depending on the type of dispute, you may file legal proceedings relating to patents at the IPO or with the Courts. You may also file proceedings in relation to some trade mark and design issues, eg: you may file opposition to the registration of a trade mark application or file invalidity/revocation applications at the IPO. Legal costs related to proceedings are calculated on a published fixed scale with maximum limits for different stages.
T IP Crime
rade mark infringement on a commercial scale is commonly called ʻcounterfeitingʼ and may be a criminal
offence. Similarly, copyright infringement on a commercial scale or to such an extent to ʻaffect prejudiciallyʼ the right holder is usually referred to as ʻpiracyʼ and may also be a criminal offence. Trading Standards may be able to take action in such cases.
If you have concerns, or are aware of any person that may be involved in counterfeiting and/or piracy, then you may report this through your local trading standards via Consumer Direct, the Police or anonymously via the charity Crimestoppers.
Those who are responsible for the production and distribution of counterfeit and pirated products and content on a commercial scale may also be involved with other types of serious organised crime, such as benefit fraud, drugs and people trafficking, according to the IPO.
I Trade mark infringement
f, like our reader discovered, you are using an identical or similar trade mark for identical or similar goods and services to a registered trade mark – you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public.
This includes the case where, because of the similarities between the marks, the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.
www.printwearandpromotion.co.uk
Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.
T Unregistered trade marks
here is no available remedy for trade mark infringement if the earlier trade mark is unregistered. Some unregistered trade marks may be protected under Common Law and this is known as Passing Off. However, whether or not they are protected will depend on the circumstances, in particular: n Whether, and to what extent, the owner of the unregistered trade mark was trading under the name at the date of commencement of the use of the later mark; n Whether the two marks are sufficiently similar, having regard to their fields of trade, so as to be likely to confuse and deceive (whether or not intentionally) a substantial number of persons into thinking that the junior userʼs goods and services are those of the senior user; The extent of the damage that such confusion would cause to the goodwill in the senior userʼs business.
If you think you may be infringing, what should you do?
G
et legal advice. There may be a number of potential courses of action or defences open to you, but this will very much depend on the particular circumstances of your case. Some traders who think they may be infringing an earlier trade mark choose to cease trading under the offending sign, others choose to approach the earlier trade mark owner and attempt to negotiate a way forward that suits both parties, which may include a co-existence agreement.
If you decide that you are not infringing, or you have a good defence, you may decide to stand your ground or even to sue the trade mark holder for making unjustified threats. In the worst case scenario, you may have to change your trade mark and re-brand your products or services.
G case.
One potential option open to you is to write to the infringer. However you must be satisfied that the earlier trade mark that you own and the activities of the infringer
If someone is infringing my trade mark, what can I do?
et legal advice, as the most suitable course of action will depend on the particular circumstances of your
justify this. This is because the law also protects traders from unjustifiable threats of trade mark infringement. You may be able to negotiate a settlement which suits both parties, which may involve a co-existence agreement. Another option is that you may be able to get a court order to force the infringer to cease and pay compensation for damages. However, infringement actions must be taken to the PCC or higher courts. The IPO does not handle such actions.
Should you apply a sign (trade mark) to goods or packaging which is identical or likely to be mistaken for an existing registered trade mark without the permission of the owner of that mark and with the intention of making a gain or causing someone else to make a loss then this action may be a criminal offence. The local Trading Standards Office can enforce trade mark offences, so-called “counterfeiting”.
Useful information and contacts
The Chartered Institute of Patent Attorneys (CIPA)
www.cipa.org.uk/pages/home The Institute of Trade Mark Attorneys
www.itma.org.uk/about The Law Society
www.lawsociety.org.uk/home.law Law Society of Scotland
www.lawscot.org.uk/
Law Society of Northern Ireland
www.lawsoc-ni.org/ The Federation of Small Businesses
www.fsb.org.uk/ The Citizens Advice
www.citizensadvice.org.uk/ The Civil Mediation Council
www.civilmediation.org/ The Confederation of British Industry
www.cbi.org.uk/ Consumer Focus
www.consumerfocus.org.uk UK Trade & Investment
www.ukti.gov.uk IP Crime Newsletter
www.IPO.gov.uk/crime-newsletter.pdf Trading Standards
www.tradingstandards.gov.uk Supply chain toolkit
www.IPO.gov.uk/ipctoolkit.pdf
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