If you can't resolve trade mark disputes amicably, or through mediation and settlement, you may need to file legal proceedings to prevent infringement.
What is considered trade mark infringement?
In order to establish infringement, you will have to show that someone has used your registered trade mark (or one confusingly similar to yours) on related goods and services:
- without your consent
- in the course of a trade
- in the territory where the trade mark right is registered
You will likely have to demonstrate to the court that you have tried to enforce your trade mark and resolve the dispute - through cease and desist action, mediation or settlement - before starting litigation. See how to enforce your trade mark
To constitute infringement, the trade mark use must also fall within one of the infringing acts as defined by the law. Infringing acts may include (among others):
- affixing the trade mark to goods or their packaging
- offering goods for sale or supplying services under the trade mark
- importing or exporting goods under the trade mark
- using the trade mark on promotional material or in advertising
Under the Trade Mark Regulations 2018, which came into effect on 14 January 2019, a wider range of activities will be considered infringing, allowing you to take action against those that:
- prepare to counterfeit your goods (eg use your mark on packaging, labels, etc prior to making counterfeits)
- use a company name that conflicts with your trade mark
If someone has infringed on your unregistered trade mark, or if your infringement case is unlikely to succeed, you may want to consider passing off action.
Dealing with trade mark infringement
Trade mark disputes are typically handled under civil law. You can file legal proceedings for trade mark infringement either through:
- the Intellectual Property Office (IPO)
- the courts
Some types of proceedings you can only file through one or the other.
If you pursue court litigation, you can use the Chancery Division of the High Court of Northern Ireland if your claim is complex or valuable. There are no limits to legal costs or damages you can claim.
Trade mark hearing or written decision
If it is necessary to go through a legal process, both sides will have to file evidence in support of their side of the dispute. Once that happens, you will be offered one of two possibilities:
- to attend a hearing - at which the evidence can be questioned or discussed
- a written decision - based on the evidence
Either way, both parties can appeal the decision.
Defences to trade mark infringement
Several defences to trade mark infringement are possible under the law, including:
- the use of another registered trademark
- the use of own name and address
- the use of certain indications
- the use of intended purpose
- the use of an earlier mark
A defendant may also argue that the mark in question is invalid. See invalidation of trade marks.
Remedies for trade mark infringement
The court has a number of possible remedies at their disposal. Civil remedies for trade mark infringement include:
- injunctions - ordering the infringer to stop using the mark
- damages - such as the cost of litigation and attorney's fees - or account of profits
- delivery up and disposal of offending products
If there is sufficient evidence of infringement, the Police or Trading Standards Officers can take criminal proceedings in cases of intellectual property crime.
Importance of legal advice in trade mark disputes
You should get legal advice before going to court. You may want to seek advice from a trade mark attorney, or ask them to act on your behalf in resolving the dispute.
Unjustifiable threat of trade mark infringement action
The law protects businesses from unjustifiable threats of action for trade mark infringement. Before you decide to take action against an infringer, make sure that:
- you have the right to do this
- the trade mark registration applies in the particular market for the particular goods and services
- the actions of the infringer justify you asking for them to stop
See more on protecting registered trade marks.