What actions can be taken against trademark infringement?

We should state first that trademark encourages businesses to invest in their brand by preventing others from using it. Trademark infringement cases arise when an unauthorized individual or business uses another company’s trademark in ways that can confuse and mislead consumers. Any business, whether they do it intentionally or accidentally, can be sued for using logos, phrases, or words that share similarities with other company’s registered marks.

Trademark infringement means a use of the mark which causes confusion as the source of goods. Trademark protection gives the business the right to stop others from using the same mark, but only when the alleged trademark infringement causes likely confusion about the source of goods. To get infringement damages, the owner must use data, experts and research to show confusion is leading to a loss of revenue or the brand’s goodwill.

Avoiding trademark infringement requires a basic understanding of trademark law, good research and sound judgment. Before starting any new venture, take the time to make sure that you are not getting too close to an existing trademark.

Trademark cases can cause damage to reputation no matter if it’s a large business or a small one. That is why presenting strong arguments in court can be crucial. Here, then, are some things you need to take note of to win a trademark infringement case.

As the plaintiff, you should double check your registration before anything else. This is because you’ll have to show proof of when the mark was first used (if it was used in the market before the alleged infringer did) and that the trademark has not lapsed. If you have assigned rights to third-party firms, make sure to take note of this also. As long as your trademark registration is still valid, you will almost always have the advantage.

If the infringement has caused serious damage to your business and reputation, then it should be worth your time and resources to push through with the lawsuit. A specialized attorney might also help you settle if you want the illegal use of your trademark to be ceased or just ask for a certain amount for compensation of damages.

What should I do if someone infringes my trademark?

There are two conceivable situations:

  1. You have seen an application to register a conflicting trademark in the Trademarks Register

If another party has applied to register a trademark that conflicts with or possibly infringes yours, you can write to the other party with a request to stop using the conflicting trademark. If this fails to yield the desired result, you can file an opposition. Usually, you must file the opposition within two months from the date on which the conflicting trademark was published in the Trademarks Register.

The opposition procedure is a simple and relatively inexpensive way of opposing – based on your own trademark rights – the registration of a new, similar trademark for the same or similar goods or services. This makes it possible for you to resolve your trademark dispute without resorting to the law. It may be advisable to use the services of an IP professional.

If the two-month opposition period has passed, you can still take action against the conflicting trademark by initiating a cancellation procedure at the Receiving Office.  The Office can rule on the validity of the trademark registration in a cancellation procedure. This may result in the trademark being deleted.

  1. You can take your registration issue to court

Not only can the court rule on the validity of the trademark, it can also issue an injunction against using the infringing trademark, possibly with a seizure on goods, compensation for damages or even surrender of the profits (in the case of a wilful infringement).

If you discover a conflicting trademark on the internet or elsewhere and it is not listed in the Trademarks Register, there are two things you can do: you can write to the other party and request that it stops using the conflicting sign or you can present your trademark registration to a court of law.

If you discover a trademark infringement, the best course of action is to seek the advice of a specialized lawyer/IP professional.