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Six tips to follow if you think somebody is using your trademark

(Image credit: Image source: Shutterstock/niroworld)

It was recently reported that London based technology company, Technology Will Save Us Ltd, has accused BT of stealing its advertising slogan “technology will save us” as part of BT’s new Beyond Limits campaign which launched in October.

A quick search of the UK’s Intellectual Property Office’s trade mark register shows that the tech company registered its business name and slogan “Technology Will Save Us” as a UK trade mark in 12 February 2015.

Bethany Koby, one of the founders of the tech company, has indicated that she is not pursuing legal action at this stage and instead would be willing to work with BT. “We fully believe in that campaign because it’s what our business has stood for the past six years,” she said. “It’s not a vindictive thing”. BT has also said that it plans to start a dialogue with the company regarding the use of the trade mark, “We are already in the process of setting up a meeting with Bethany next week. Until we’ve spoken to her, it would be pre-emptive to say anything further” said a BT spokesperson. 

If, like Technology Will Save Us, you find that another company is using your trade mark, what can you do?

Step one: Check that your trade mark is actually being infringed

In the UK, trade mark infringement occurs in the following circumstances:

  • The infringer uses an identical sign to the registered trade mark and uses it in relation to goods or services which are identical to those for which the trade mark is registered
  • The infringer uses an identical sign to the registered trade mark and uses it in relation to goods or services which are similar to those for which the trade mark is registered and this creates a likelihood of confusion on the part of the public as to the origin of the goods or services and/or a likelihood of association between the two marks
  • The infringer uses a similar sign to the registered trade mark and uses it in relation to goods or services which are identical to those for which the trade mark is registered and this creates a likelihood of confusion on the part of the public as to the origin of the goods or services and/or a likelihood of association between the two marks
  • The infringer uses a sign which is identical or similar to the registered trade mark on goods or services which are not similar but the trade mark has a reputation in the UK, and the use of the sign takes unfair advantage of, or is detrimental to, the trade mark

When is use not infringing?

While it might be frustrating to see another business using your trade mark, there are a number of ways in which a trade mark can be used in a legal and non-infringing way. These include:

  • Where the sign is being used in relation to goods and services which are different to yours and there is no risk of confusion. For example, if you run a laundrette using the trade mark ‘Whirlz’. It would not be an infringement of your trade mark for another person to use the trade mark ‘Whirlz’ in relation to their ice cream shop.
  • Where the sign being used is similar but the goods and services aren’t identical. For example, if a company has the trade mark ‘Katz’, it would not be an infringement for another business to use the name ‘Catts’ or ‘Kats’ or ‘Catz’ provided they weren’t selling identical goods or services. 
  • Where a word is being used in its normal sense. For example, if a glazing company uses a sign which says “Installing windows since 1980”, it will not be an infringement of Microsoft’s ‘Windows’ trade mark.
  • Where the user has been granted a licence to use your trade mark and they are using it in accordance with the terms of that licence.

Step two: Gather evidence

If you suspect a third party is infringing your trade mark, it is important to capture and preserve evidence of the apparent infringement at an early stage, before lawyers are approached and before you make contact with the potential infringer. Without evidence, there is no claim.

Unless you’ve been involved in litigation before, capturing evidence at the outset might not be something that immediately comes to mind as being a critical first step.  However, if the opportunity to capture important evidence is missed, a claim may be fatally harmed.

Screenshots, photographs, example products and copies of marketing materials and other literature are all useful evidence for a trade mark infringement claim. Try to include date and time information in order to demonstrate when the evidence was collected as this can be useful to show the duration of the infringement. 

Step three: Avoid making unjustified threats

There are laws in the UK which are intended to prevent spurious or unjustified threats of trade mark infringement being made against innocent business, whose fear of being involved in costly litigation may result in them yielding and their business being damaged.

The law of unjustified threats means that care must be taken when sending cease and desist letters because such letters could constitute actionable threats entitling their recipients to seek an injunction preventing further threats and giving them the right to claim damages.

Step Four: Consider whether you could work with the infringer

Not all trade mark infringement is deliberate. Other businesses could use your trade mark unwittingly if they fail to carry out adequate trade mark searches before they start using a new name, mark or slogan. Or they might be aware of your trade mark but not realise that their use is infringing or not know who to contact in order to obtain a proper license. Where situations like this occur, you should consider whether it is possible to enter into a new licensing arrangement or other business opportunity with the infringer which could avoid litigation and be mutually beneficial to both of your businesses.

Step five: Think about the PR ramifications

The founders of Technology Will Save Us have been quite savvy in their response to the BT issue. The article in The Times and the extensive publicity on Twitter and other social media platforms has helped to raise the profile of the company and the positive approach taken by Bethany Koby in her interview and subsequent social media posts has no doubt won the company even more fans.

While it can be sensible to take a firm stance when protecting your intellectual property, not all trade mark infringements are equal and nor do they merit the same response. Sometimes a simple call or a polite email can be all that is required to resolve the situation.

Step six: Take specialist advice

If resolution is not possible via an informal discussion, it is worth obtaining legal advice in order to establish what steps should be taken next. This may include sending a cease and desist letter, sending a legally binding undertaking, commencing a mediation or other dispute resolution process to try to reach a settlement or issuing a claim form to start civil proceedings.

Trade mark infringement litigation can be complicated and costly but by seeking advice early and taking a responsible and measured approach to enforcement, you can protect your trade marks without wasting unnecessary time or money.

Kathryn Rogers, partner, Cripps Pemberton Greenish