Unfortunately, it is not uncommon to find that somebody else is using your trade mark but having a registration in place for your mark is a helpful place to start when enforcing your rights. You will likely have spent a lot of time and effort in building your brand and taking the steps to register your rights, so it is important to take prompt action if you become aware of potentially wrongful use (or ‘infringement’) of your mark.
What should I do?
- Act quickly. If your mark is being used, then you will want to put a stop to it as soon as possible to try and limit any damage that could be caused by the wrongful use of your mark. It is also our experience that resolving infringements, particularly if they are accidental rather than deliberate, is easier the earlier action is taken.
- Gather evidence. Capture any and all evidence you can of the infringement and gather as much information as you can. You should try to ascertain who is using the mark, when they started using the mark and where your mark is used.
- Check the validity of your mark. You will only be able to bring a successful claim for infringement if your trade mark is valid. You should therefore check:
- Has your trade mark expired? Trade marks can last indefinitely but must be renewed every 10 years or they will lapse.
- Is your trade mark in use? A challenge can be brought to cancel a registered trade mark if there has been no genuine use of the mark for a 5-year period.
- Do you have rights in the relevant country? You should check whether you have the right to enforce your trade mark in the country where infringement is taking place or if there is a connection to a country you do have rights in (such as being exported from or imported to that country).
How to prevent trade mark infringement in the future…
Unfortunately, you can’t prevent trade mark infringement altogether. There are a few things you could do, however, to try and reduce the likelihood of your mark being used.
1. Give notice of your registration. You can use the words ‘registered trade mark’ or the ® symbol next to your trade mark to give notice of your registration. This may help to deter possible infringes. However, it is important to note that it is a criminal offence to use the words ‘registered’ or the ® symbol to falsely represent a mark as a registered trade mark when it is not, and you know or have reason to know that it is not.
2. Regularly check whether your mark is in use. Many businesses conduct regular trade mark searches to check whether their mark is in use or whether any similar trade mark applications have been made. This helps to catch any intended infringement early.
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