If you own a trade mark, you must diligently protect it from infringement and other misuse, such as dilution, unfair competition, false advertising, passing off, cybersquatting and reputational tarnish.
If you do not enforce your rights, your mark may weaken, loose its distinctiveness and, ultimately, you may lose the right to use or defend it.
Trade mark enforcement - key strategies
To enforce your rights, you will typically have to:
- display your trade mark rights
- monitor your trade mark for misuse
- detect infringement
- take action against infringement
As a deterrent against misuse, you should clearly display your trade mark rights on your products and services.
Display your ® or TM symbols
There are two common ways of displaying your rights:
- the ® symbol or the abbreviation 'RTM' (for registered trade marks)
- the abbreviation 'TM'
Although it is not essential, you can use the ® symbol or the abbreviation 'RTM' to show that the mark has been registered. You can do this even if you have registered your mark outside the UK. It's illegal to use either the ® symbol or 'RTM' with a mark that has not been registered at all.
You can use the abbreviation 'TM' to show that you are using something as a trade mark, although in the UK this has no legal meaning. If you need to protect an unregistered trade mark, see passing off: definition, remedies and defences.
Monitor trade mark infringement
Monitoring and early detection of potential trade mark misuse is critical.
The Intellectual Property Office, who granted you the trade mark registration, do not police the use of the mark. You should proactively monitor the market to detect if anyone is using a mark that is identical or similar to yours.
What if someone is using your trade mark?
If you find that someone is using your trade mark without your consent, seek legal advice as soon as possible.
In most cases, you will begin addressing infringement by sending a cease and desist letter to the infringer. Many will stop infringing if they become aware that they have wrongly used your mark or used it unknowingly, or that you are willing to legally assert your trade mark rights.
If you can't resolve issues amicably and the infringement continues, you should consider alternative dispute resolution methods - such as intellectual property mediation - before taking legal action.
Professional mediators or legal advisors may be able to help you negotiate a trade mark settlement. Several options may be available, including:
- co-existence agreement - where you both use the trade mark, but agree not to trade in each other's market
- licensing agreement - where the party using your mark pays you a licence fee
Find out how to make money from trade marks.
Trade mark infringement litigation
If you can't reach a settlement, and the infringement continues, your only resort may be trade mark enforcement litigation. You may need to apply for a court order to stop the infringer and, if appropriate, to claim compensation for damages.
Goods passing through the UK (goods in transit)
If you believe that fake or counterfeit goods using your trade mark are passing through the UK on their way to countries outside the EU customs territory, you can ask UK Customs to detain them. The burden will be on the person shipping the goods to prove that you have no right to stop the goods being marketed in the destination country.