​Defences for Trademark Infringement

Have you have received notice that you’re misusing a trademark? Are you facing a threat of proceedings? Don’t panic - there may be a defence.

First, ask yourself…

Do you have the right to use the trademark or have you been granted a license by the owner? If you have or believe that you have, the first step is to check the terms of the licence to ensure you’re using the trademark correctly.

Is the trademark registered?

The first line of defence is always to check if the trademark is registered, and if it is, check that the registration is valid. A trademark cannot be misused unless it has been registered at the Trade Mark Registry. You can search for this information at no charge here.

If your search reveals the trademark is not registered, then there is no claim for trademark infringement, however there may be a claim for Passing Off. So, whatever you do, don’t ignore the situation. (For more information, read our article on Passing Off.)

The trademark is registered, what next?

If the trademark is registered, the Trade Marks Act 1994 places some limits on the use of the trademark by its owner. Section 11 of the TMA 1994 sets out these limits, they are as follows:

• The use of a person of their name or address, or
• The use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
• The use of the trademark for the purpose of indicating the nature of the goods or services being provided.

An example of the last point is a supplier selling car parts made by a specific car company; they could use the logo to advertise the supply of these parts. Also, if you’re selling goods on sale throughout the EU by the goods’ owner, they can be legitimately sold under the trademark in the UK. The key here is that the trademark must be authorised for use by the owner. Therefore, if you can show that you have the owner’s permission, you’ll, in theory, be protected.

A question of acquiescence

Have you been using a trademark that is similar to or the same as another’s for a period of 5 years or more? Yes? Well, don't worry - you may be safe.

If a proprietor of a trademark knows of your use and hasn’t raised an issue during this period, their actions would suggest that they’re not concerned with your use. The courts would infer that they, therefore, have agreed to your use.

One last but important word

Never ignore a letter setting out that you may be in breach of someone’s trademark. It doesn’t matter if this letter comes from a solicitor or the individual - if you receive notice of a possible breach, the first thing to do is open the channels of communication.

It’s key to note any deadlines that the letter states for the time of your reply. Even if you send a holding response outlining you’re reviewing the situation, you need to ensure a reply is sent during the allotted time. If you receive any paperwork from a court it’s vital that you reply within the deadline stated on the forms. It’s also essential to seek legal assistance.

A specialist in the field won’t only be able to assess the validity of any claim made, but also advise you in depth on the process involved in defending a claim. They can provide a well-drafted and detailed reply to any letter, and set out your defence in clear and timely manner.

Find a legal professional on the Law Society’s website.