Written By:

Siobhan Williams

Senior Associate

Darwin Gray

 

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Ignorance is not bliss when it comes to protecting your company’s intellectual property rights.

By failing to enforce your trade marks, or by accepting another party’s use of your trade marks without a licence, it not only weakens your rights but might prevent you from enforcing them altogether.

Trade marks

Intellectual property can be a vital business asset which differentiates your products or services from someone else’s. Because they are so crucial, trade mark owners and businesses should take a firm stance against infringement or other misuse: your reputation and brand value might be at stake.

Trade mark infringement is very common, and sometimes people may not even realise that they are infringing an existing trade mark. A third party will infringe a registered trade mark if they use the same or confusingly similar mark (such as an image or word), in relation to similar goods or services that the trade mark is registered for.

Low level infringers may not be cost-effective to pursue, but this does not mean a business should be relaxed when thinking about other people using their intellectual property. Use of trade marks for certain promotional, or parody uses, may still be infringement.

It is important to remember that whilst ensuring you have a registered trade mark will make it easier to defend your brand, if you are aware of a third party infringing your trade mark and you do nothing for a period of 5 years, you will be deemed to have “acquiesced” (i.e. consented) to their use of the trade mark and would be unable to bring a claim for infringement.  It is therefore important to ensure that you act swiftly if you become aware that a third party is infringing your trade mark.

Recent, notable disputes

M&S is a prime example of a company that takes the protection of their intellectual property very seriously. Recently, an ice cream parlour named ‘Fabio’s Gelato’ used the well-known M&S-brand ‘Percy Pig’ sweets to feature in a new flavour for their products. This might seem an innocent and harmless inspiration from the sweets, however M&S’s legal team swiftly took action.

Fabio’s Gelato previewed their new flavour ‘PERKY PIG’ on social media with a picture of a tub of ice cream topped with percy pig sweets. This was quickly brought to the attention of M&S through the power of social media, who then wrote to Fabio’s Gelato requesting that they change the name.  As set out above, it is important for M&S to take swift action in relation to any third-party infringement, in order to ensure they do not lose their right to defend their brand.

This is not long after M&S launched a legal battle against Aldi for claims of infringement over their trade mark for Colin the Caterpillar and Aldi’s “strikingly similar products”.

Key takeaways

Whilst M&S may seem to take a robust approach to defending their rights, they do so for good reason. Trade marks are applied for so that a brand can have absolute rights over the use of an image, name, or wording (to name a few).

If a company such as M&S allows business to use, and profit from, their trade marks, they risk not only losing the chance of defending their trade marks, but ultimately lessening the value of their products.

Our top tips in relation to protecting your brand are:

1. Register your trade mark if possible. Having the benefit of a registered trade mark makes it much easier to pursue a claim against a third party you consider is infringing on your brand. Take advice in relation to trade mark registration to ensure that it is registered in the correct classes of use to maximise your protection.
2. Before registering your trade mark, thorough searches should be carried out (for example on the Intellectual Property Office’s (IPO) trade mark register) to ensure that the branding or logo you wish to use for your business is not confusingly similar to someone else’s. By carrying out this basic due diligence, you can minimise the risk of someone objecting to a trade mark you wish to register and take steps to choose a different logo or brand name etc at an early stage of your business or product.
3. Act swiftly if you become aware of a third party infringing your trade mark. As with the Fabio’s Gelato example above, often a letter outlining that the third party is infringing your trade mark and requiring them to cease doing so can be enough to make them change course.
4. If you have a registered trade mark, the IPO will usually notify you if someone has sought to register a trade mark which is similar to your pre-existing trade mark. The IPO will then provide you with information about the route to challenge such an application. It will usually be more cost-effective to make a challenge at this stage.

If you need any advice protecting your company’s intellectual property rights, please get in touch with a member of our corporate team, Siobhan Williams, via email on [email protected] or via telephone on 029 2082 9124 for a free initial chat to see how we can help you.