A company’s brand name is a valuable asset that should be carefully protected. Simply using a name is not sufficient to obtain trade mark protection. Many businesses only realise the importance of trade mark rights at a late stage, often after a competitor begins offering products or services under a similar or confusingly similar name.
To obtain trade mark protection, the brand name must be formally registered as a trade mark. Trade marks can be registered with the Benelux Office for Intellectual Property (BOIP) or the European Union Intellectual Property Office (EUIPO). Registration is also possible in jurisdictions outside the European Union.
Without registration, trade mark protection will generally not exist, and there will be limited scope to take effective action against infringing parties.
Trade mark infringement: what next?
What should you do if your business is confronted with trade mark infringement?
In practice, there is sometimes a tendency to take a wait-and-see approach when faced with an actual or potential infringement. The assumption is that the issue may resolve itself, for example because a new competitor discontinues its activities or exits the market. In many cases, however, this passive approach proves counterproductive.
When a competitor uses a highly similar trade mark, a failure to act can lead to increasing market confusion and a gradual weakening of the distinctiveness of your own brand.
Moreover, enforcement serves not only a corrective function in relation to a specific infringement, but also an important deterrent function within the market. Businesses that actively protect their rights reinforce the value of their trade marks and discourage potential infringers. While not every infringement immediately warrants legal proceedings, almost every infringement requires a deliberate and strategically considered response.
Enforcement tools
In many cases, trade mark enforcement begins with a cease-and-desist letter, requiring the infringing party to stop and refrain from further infringing activities. The recipient is often asked to sign a written undertaking, and additional arrangements may be proposed. This approach can result in a swift amicable settlement. Acting promptly at this stage is often crucial to prevent further damage and escalation.
If the parties are unable to reach an agreement, legal proceedings may follow. In urgent cases, preliminary injunction proceedings can be an effective means of obtaining an injunction against the infringement at short notice.
In addition, the following remedies may be sought:
- recall and/or destruction of infringing products;
- compensation for damages suffered;
- reimbursement of (full) legal costs under the intellectual property costs regime;
- surrender of profits generated by the infringing party.
Trade mark rights may also be enforced through administrative procedures, including proceedings before the BOIP and EUIPO. Through these procedures, a trade mark owner can challenge an infringing trade mark by filing an application for its cancellation.
Conclusion
A strong trade mark position starts with the timely and proper registration of trade mark rights. Without registration, there is generally no legal basis for protection, nor an effective means of taking action against infringement.
Where infringement does occur, timely, decisive and strategic action is essential. Doing so helps minimise damage and prevent further erosion of the exclusivity and commercial value of the brand.
Do you have questions about registering your trade mark, a potential trade mark infringement, or would you like us to assess the strength of your position? We advise, register and litigate. Please feel free to contact us.
