Trade marks are not just paper assets or words or logos to be registered and then forgotten. They are an important business asset which should play a key role in your broader commercial strategy.
In an ideal world there would be no disputes, but occasionally circumstances arise where you may need to take steps to stop others who are infringing your trade mark or passing themselves off as having a connection with you, whether innocently or on purpose. There may be times when someone else has registered a domain name that includes your trade mark in an attempt to attract more visitors to their site, or where copycats are making counterfeit products. Whatever the circumstances, this can be extremely damaging to your business and so you will need to take steps to resolve the problem as soon as possible.
We have helped clients across a wide range of commercial sectors (including audio equipment, software, sports, food and drink, fashion, entertainment, cosmetics and pharmaceuticals) to resolve the kinds of problems described above and in many different jurisdictions — always keeping in mind their wider commercial strategy and business aims.
If you discover that another party is using a trade mark that is identical or ‘confusingly similar’ to yours, they may be infringing your trade mark registration. Alternatively, this may be something that you are accused of. If either should happen, we can advise you on the options available, based on the strength of your case, the commercial backdrop to the dispute, the respective financial positions of the parties and the likely outcome of each option, using our extensive experience in this area. Sometimes the seriousness of the issue will merit a fight but sometimes the best solution is a negotiated resolution to the issue, giving commercial and legal certainty for the future. Either way, we will tell you honestly what we think you should do and give proactive recommendations and advice, always being clear about the costs involved.
Claims relating to passing off will often go hand in hand with infringement, but it may be a claim in its own right, for example, where a mark has been used in the United Kingdom but not registered, or where a mark has been used for products/services beyond those for which the mark is registered.
Passing off brings with it its own laws and practice which are different from registered trade marks, involving complex issues relating to the geographic scope and ownership of goodwill, what misrepresentation has occurred and whether there has been any damage or if it is likely to occur. All of these key factors need to be considered carefully against the backdrop of the commercial situation and how any litigation ties in with the commercial drivers behind the business.
Domain names/the internet
The advent of the internet has changed the way we lead our lives. In trade mark terms it has added a whole new and complex dimension to the protection and enforcement of these rights. We regularly advise on a wide range of issues relating to the use (and misuse) of trade marks on the internet in the UK and abroad, where necessary working closely with our network of trusted local attorneys.
Cases handled have involved issues of infringement and passing off in respect of a well-known car manufacturer, misuse of ad-words and meta-tags, taking down infringing content from websites including on social media sites, the anonymous acquisition of domain names for our clients, and the preparation and filing of domain name complaints against cyber squatters, using the DRS and UDRP procedures.
With so many fake goods on the market it can be difficult to know where to begin when it comes to combatting counterfeits. We have worked with many clients in a range of industries to devise cost-effective strategies for dealing with these issues, including conducting investigations to identify the source of fake goods being sold online and through other channels, devising creative trade mark and copyright filing strategies to make combatting counterfeits easier and making strategic use of online marketplace take-down functions.
We have also built up close relationships with a number of Trading Standards departments and Customs teams over the years. We regularly record our clients’ intellectual property rights with authorities around the world so that we are notified of potential counterfeit goods, facilitating their early destruction by working where necessary with a network of trusted local attorneys, which can often get the best commercial result for our clients while avoiding the time and expense of litigation.