The owners of registered trademarks have exclusive rights to use their mark in trade. So, there is a potential trademark infringement where:
- another party uses a mark which is confusingly similar in respect of their own goods and services.
- A well known trademark is used, even for different goods and services.
Note that if a trademark has not been registered, it may sometimes be possible to bring an action in ‘passing off’ should another business use a similar mark.
Disputes at the trademark registration stage
When you apply for a trademark the trademark registry is required to assess the application in light of trademark law. Each country has its own trademark laws. So, there will be differences of detail between countries even though there is a similar approach to trademarks at international level. Disputes that might arise during the registration stage include:
- if the relevant registry raises objections to your application based on prevailing trademark law you may disagree by raising arguments in support of your application to overcome the objections. This might lead to a hearing by the office, and in some cases the applicant might go to court for a decision.
- existing trademark holders may lodge an ‘opposition’ objecting to the application on legal grounds. Usually this is because an existing mark owner believes the mark applied for is too similar to its own mark. Where this happens, both the applicant and the opponent are given the opportunity to make written arguments, and there may also be a hearing.
- Applications may also be made to invalidate or revoke a trademark. Often disputes centre on whether a mark is still being used in trade.
Resolving Trademark Infringements
It is common practice to initiate a trademark infringement case using a cease and desist letter. It makes sense to consult lawyers before sending such a letter even if lawyers have developed templates for you to use.
On receiving this type of letter, it is essential to take advice as they raise implications for you and your business that are not immediately obvious.
Also, it is sometimes possible to succeed in trademark infringement disputes by demonstrating that your opponents’ trademark should not have been registered.
Trademark infringements are normally resolved using the type of dispute resolution procedure available for other commercial disputes and intellectual property infringements.