Enforcement / Infringement Advice / Passing Off Advice

Enforcement

A strong trade mark plays an important role in developing a successful business. As well as offering commercial protection from competitors, a trade mark is also an important asset that may account for up to 70% or more of the total value of a business. For this reason it is important to work with an IP firm that understands your commercial aims and objectives and can provide you with the necessary vigilance to protect your trade marks.

Given the important role of trade marks it is almost inevitable that a successful business will be required to defend its trade mark from the unwarranted behaviour of competitors. Common trade mark disputes involve issues relating to infringement, passing off (misrepresentation) and enforcement. Increasingly, in a world dominated by the internet, a dispute will likely involve a digital element, such as the surreptitious use of a trade mark in a domain name or pay-per-click advertising campaign to drive traffic to a competitor’s website.

GJE’s trade mark team is experienced in handling all types of trade mark disputes across numerous industry sectors and in different jurisdictions. We can help you resolve a dispute quickly with pragmatic advice that is in keeping with the long-term aims and strategy of your business.

Infringement

Infringement disputes involving trade marks are very common. Should you find a competitor using an identical or “confusingly similar” trade mark, or you are accused of a similar action, we can advise you on the most appropriate way to resolve the dispute. Our advice will consider all contributing factors, such as the commercial background, the financial strength of the parties involved and the probability of success for each possible form of legal action based on our considerable experience in managing infringement disputes.

Sometimes a fight is justified to fully resolve a dispute and to send a clear signal to other potential infringers, but for other times a negotiated settlement may be preferable. Whatever course of action is suggested you can be sure that our pragmatic approach will be in keeping with your business objectives and fully cost transparent.

Passing off

Misrepresentation of another’s trade mark, or passing off, as it is known, can involve both registered and unregistered trade marks. A passing off dispute may involve issues relating to infringement, but it can also throw up its own unique set of circumstances. For instance, the internet may have provided a brand with a substantial awareness and following in a country where it has no trade mark registration and where that goodwill and reputation is open to exploitation by others. Restaurant names are a typical example, but our interconnected world now provides many opportunities for indiscriminate exploitation of a trade mark by others in any location across many industry sectors.

GJE’s trade mark attorneys are highly experienced in managing passing off claims and regularly work with leading IP firms in other jurisdictions to deal with disputes outside of Europe. If you are concerned that your trade mark may be vulnerable to exploitation by others or are aware that it is being misrepresented then we can help you.

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