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Trademark enforcement - how to immortalise your brand

Updated: Mar 15

One of the main benefits of registering a trademark is the ability to enforce your rights to stop infringement.

It's essential to enforce your rights against infringers to ensure your brand remains protected. Failure to take action could even lead to your rights being eroded.

Enforcing your rights is a use it or lose it situation - so here's what you need to know about why and how to enforce your trade mark to immortalise your brand.

If you don't have a trade mark registration yet, read this guide on whether you should apply for one.

It's possible to rely on other rights to stop trade mark infringement, such as by arguing that the conduct constitutes passing off and misleading and deceptive conduct.

However, compared with relying on a registered mark, it can be much more difficult to stop the infringement when relying on those rights.

An old-school cream coloured motorbike with BMW logo
Enforcing your trademark is the key to brand immortality

Why is it important to enforce a trademark?

If you have a registered trademark that is being infringed, it's important to enforce your rights to stop the infringement.

The consequences of infringing conduct can be significant for your business. If you want to learn more, check out this article on the impact of trademark infringement.

Beyond the ongoing impact of infringing conduct, there are consequences for failing to enforce your mark. If you don't enforce your registration, and the infringer continues their conduct over a period of several years, they could eventually obtain rights to the trade mark they're using.

If this happened, it would stop you from being able to enforce your rights against the infringer, and could cause you problems in the future if you tried to expand the scope of your goods and services description.

In this situation, it could even be possible for you to infringe the infringer's rights if you use the mark on goods or services that aren't protected by your registration!

When should you take action?

If you discover infringing conduct, it's important to take action sooner rather than later.

The longer it goes on unabated, the harder it usually is to stop the infringement.

That's because, particularly for people who are unknowingly infringing your rights, the longer they use the trade mark, the more wedded to it they become. The more they invest in their business, and the higher the cost to them to stop the infringing conduct.

This can make the infringer more reluctant to voluntarily agree to stop using the mark, which might require you to take stronger action to stop the infringement, potentially including legal proceedings.

On the other hand, if you enforce your rights as soon as you become aware of the infringement, the more likely it is that a cease and desist letter will solve the problem.

How do you enforce a trade mark?

Enforcing a trade mark usually involves:

  1. Gathering evidence of the infringement. This might include website screenshots and records of any confusion with your customers.

  2. Identifying and confirming that the conduct meets the legal threshold for infringement (which requires legal advice);

  3. Researching the infringer and their business. If it's a company, who are the directors, and how long have they been operating?

  4. Issuing a cease and desist letter;

  5. Using other tools to stop the infringing conduct. Some examples of these tools include reporting the conduct on social media/ecommerce platforms and filing domain name disputes;

  6. If you don't receive a satisfactory response, it may be necessary to escalate your demands with follow up letters and contact; and

  7. Ultimately, filing legal proceedings if you're otherwise unable to stop the infringement.

Every case of infringement is different, and it's important to get legal advice that will take into account your specific circumstances.

Why is it important to use lawyers to enforce your trademark?

They are skilled at identifying infringement

Infringement is a legal concept which requires an understanding of the law and legal precedent to properly identify. Sometimes infringing conduct is blatant, however in most cases, it is more nuanced and requires careful consideration of the legal principles.

It's important to ensure that you understand the scope of the infringement, and take all action necessary, including opposing trademark application if they have been filed. Trademark lawyers can help you with every part of this

They are more likely to be successful

Trademark lawyers are skilled in identifying and contacting infringers and developing a strategy that is likely to lead to successful enforcement of your rights.

A cease and desist letter from a trademark lawyer will generally be taken much more seriously than a letter from the owner of a registered mark. It indicates that the owner is taking the matter seriously and is willing to spend money to enforce their rights.

They can help you avoid making unjustified threats

Getting enforcement wrong could lead to potential legal trouble for you.

If you wrongfully accuse someone of infringement, the person you're accusing could file an application in court to obtain a declaration that your accusation is an unjustified threat. It could also constitute misleading and deceptive conduct.

Need help with enforcing your trade mark?

If you need help with your trademark or have a trademark issue, contact us today.

*Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.


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