Trade Mark Infringement and Passing Off

The imitation of your brand can cause serious damage to the brand’s reputation and goodwill. Trade marks and passing off protects against this.

The impact of trade mark infringement can range from consumer confusion directly taking revenue away from your brand, to damaging the reputation that your brand has built in the market.

At Napthens, our specialist Intellectual Property team acts swiftly to protect your rights when it comes to your brand, whether by bringing or defending claims for trade mark infringement or passing off.

What is Trade Mark Infringement?

Once your trade mark has been registered, whether this is your brand name, logo and visual identity, sound or even smell, it gives you exclusive usage rights.

When a third party uses a registered trade mark without your consent, or something similar enough to it to cause confusion, the trade mark may be under infringement.

An infringement can take place in both physical and digital spaces, and are generally country or region specific.

Examples of trade mark infringement include:

• Using an identical or similar mark on identical or similar goods or services
• Importing, exporting or selling goods bearing an infringing mark
• Misusing your mark in advertising to unfairly benefit from or harm your reputation

What is ‘Passing Off’?

Passing off is a concept that protects the goodwill that has been built up by an unregistered brand.

In order to prove that passing off has taken place, you must show in your claim that:

• Goodwill exists in the brand or its distinctive visual appearance (its ‘get up’).
• Misrepresentation has taken place by the third party causing consumer confusion.
• Damage or potential damage on your business as a result of the above.

Steps to Making a Trade Mark or Passing Off Claim

Our specialist IP lawyers guide you through each stage of the process:

1. Initial Assessment

We analyse the registered rights, or unregistered goodwill, of your brand and the alleged infringement.

2. Pre-Action Correspondence

We issue formal letters of claim or cease-and-desist notices setting out the remedies sought by your claim.

3. Negotiation

We seek undertakings, settlement or licensing agreements to resolve the matter without taking things to costly court proceedings.

4. Litigation in Court

Where necessary, we escalate the matter to the courts and represent you.

5. Enforcement

Once the court has made it’s decision, we support in ensuring that these orders are enforced. This may involve injunctions, damages, account of profits and the removal of infringing materials.

Steps to Defending a Trade Mark or Passing Off Claim

Should you find yourself needing to defending an infringement claim, early advice is crucial to get your house in order:

1. Review

We assess the legal and factual basis of the claim, including the validity of the claimant’s rights.

2. Response Strategy

We develop a robust defence, seeking to resolve the matter efficiently and discreetly.

3. Negotiation

Where appropriate, we negotiate settlement or co-existence agreements to avoid litigation.

4. Defence Proceedings

If proceedings are issued, we represent you in court to protect your commercial interests.

5. Reputation and Risk Management

We help you minimise reputational damage and implement steps to reduce future risk, taking a long-term and commercially-oriented approach.

Get in Touch

To speak with an expert, get in touch via our contact form today.

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