In a recent study of European SMEs, 24% of IPR owners reported that they have suffered intellectual property infringement in the last three years. The most common type of infringement was reported to be a trademark infringement (48%).
With that background, you may sooner or later notice that another company or a private person is using a trademark that is similar to your trademark. You may be tempted to write to that company and make all sorts of demands. Before you do that, you need to make sure that you have covered your own base.
The obvious starting point is to make sure that the trademarks in question are either identical or similar, and that the goods and services are also either identical or similar. If the trademarks are not similar, or the goods and services are not similar, it is likely that there is no case to be made.
Making a legal assessment of the similarity of marks and goods and services is not always easy. In fact, infringement cases are very rarely clear-cut. It is more common that there are some dissimilarities either between the marks or the goods and services.
The starting point – your own trademark
The fact that you have been using a mark does not necessarily give it any legal protection. If you accuse somebody of infringing your trademark rights, you need to make sure that you have enforceable legal rights in the first place. In practice, this means that you must have a trademark registration. If your own trademark is not registered, the chances are that you won’t be able to do anything.
In some countries, it is possible to rely on use-based trademark rights, but it is always difficult to establish that such rights exist. As a general point, if you have to rely on trademark rights that have been acquired by the use of the mark, in most instances your case is weak.
Investigate the other party’s use and their possible trademark rights
You need to establish that the other party is using the trademark for goods and services that are similar to those covered by your registration. You should also try to find out when the other party has started using the mark and if they have registered it as a trademark.
The worst case is that they have a trademark registration that is older than your trademark and the situation changes so that you are the infringer. Before taking any action against a possible infringer, the most important step is to make sure that the other party does not have any rights that they can invoke against you.
Make sure your own rights are on solid grounds
One aspect that you need to be confident about is that the other party does not have any prior trademarks that can be used against you.
Another aspect is that you should make sure that your rights cannot be invalidated on any grounds. If you accuse somebody of infringing your rights and the other party does not have any trademarks that they can use against you, they will try to find other ways of neutralising your claims.
The most common way is to threaten to cancel your trademarks. The most common grounds are that the trademark is non-distinctive and should not have been registered in the first place and that if the registration is more than 5 years old, it has not been in use.
When McDonald’s claimed that Supermac’s infringed on their trademark, Supermac’s famously managed to have the BIG MAC trademark cancelled for non-use in the EU. When Italian company Ares Design announced that they will build a reincarnation of Ferrari’s iconic 250 GTO model, Ferrari tried to stop them. As a countermeasure, Ares successfully managed to have Ferrari’s 3D trademark depicting the model 250 GTO’s appearance cancelled for non-use.
If your trademark registration is more than five years old, it immediately opens the possibility for the other party to challenge the validity of your registration. Even if you have used your trademark, you need to be able to prove it. Proving legally valid trademark use is always not easy. We all know that BIG MAC has been used as a trademark in the EU, yet McDonald’s did not manage to prove it sufficiently.
These cases are not rare. When accused of trademark infringement, in many cases the best response is to try to cancel the trademark that is being infringed. So if you accuse somebody of infringing your rights, you need to first evaluate what the chances are that they can cancel your rights. You need to also assess whether the infringement is so significant that you are willing to put your rights on the line.
How to approach the issue with the infringer?
If you allow the infringement to continue, you will eventually lose the right to oppose the use of the infringing trademark.
If you have determined that you have prior trademark rights that are being infringed, and your own rights are on solid grounds, it’s time to take up the infringement with the other party. Typically this means sending a letter with legal claims. These letters are commonly known as “cease and desist” letters. The most common demand is that the other party must stop using the infringing trademark. If the other party is not willing to stop the infringement, the final step is to start court proceedings to get a court to order the other party to stop the infringement.
The cease and desist letter should contain the facts and the legal basis of the allegations. It is highly recommendable to have an experienced attorney to draft the letter. If matters don’t go well, the letter and the resulting correspondence will be an important piece of evidence in the infringement trial. In our experience, cease and desist letters that have been drafted without an attorney’s help often turn out to be harmful rather than helpful.
Final comments
Trademark infringements are relatively common. To maintain the repute and integrity of your brand, it is important that you take action against infringements. However, it is equally important to make sure that when you take action, it does not turn against you. You must be confident that you have trademark rights that are older than the infringer’s possible rights and that your trademark is safe from various cancellation threats. Going on the offensive is always risky, so you should not do it lightly.
