If someone is using your trademark or a very similar one without your permission, you might be facing trademark infringement. Let me tell you how to spot trademark infringement and what you can do about it.
Trademark infringement is unauthorized use of a trademark that can cause confusion about the origin of products or services.
Trademark infringement is unauthorized use of a trademark that can cause confusion about the origin of products or services. In case of infringement, you can send a warning letter to the possible infringer and try to resolve the situation outside of court. If that doesn’t work, the trademark owner can sue the possible infringer and get monetary relief.
What is Trademark Infringement?
Trademark infringement, or trademark violation, means using a trademark without authorization from the trademark owner (or licensee) in a way that can cause confusion or deception about the origin of the product or service.
The purpose of a trademark is to avoid consumer confusion. There is a likelihood of confusion when the trademarks, as well as the goods and/or services for which they are used, are similar to a degree that consumers might think they come from the same source.
Actual consumer confusion is not essential, although it can be taken into account when measuring the likelihood of confusion.
Trademark owners (and sometimes licensees) can take legal action if somebody is infringing on their trademark and causing consumer confusion.
The scope of protection for well-known trademarks is broader, and the owner of a well-known trademark can sometimes stop others from using a similar trademark even if the products or services for which they are registered are different.
Trademark infringement examples
Let me show you some interesting examples of trademark infringement cases.
- 3M Co. sued a Chinese company that used the trademark 3N. Even though these trademarks are not identical and the products were not that similar, it was considered that trademark infringement had taken place, since 3M is a well-known brand and 3N had actually made a profit by using the trademark.
- Not only names and logos but even patterns and positions can be considered confusingly similar trademarks. Adidas sued the clothing retailer Forever 21 because the three-stripe design Forever 21 had made was similar to the iconic three stripes of Adidas.
- The World Wildlife Fund (WWF) sued the World Wrestling Federation (WWF), and made the World Wrestling Federation (WWF) change its name to World Wrestling Entertainment (WWE).
What to do when someone infringes your trademark?
If you own a trademark, you have exclusive rights. So if you think that someone has infringed your trademark, you can and should take action.
If you think that someone has infringed your trademark, you can and should take action.
You don‘t have to sue them right away. First, you can try to resolve the unpleasant situation outside of court and send a warning letter (also called a cease-and-desist letter). Inform the infringer of your rights as a trademark owner and warn them that their actions amount to trademark infringement, which must be ceased immediately. Inform them about the possible consequences if they fail to comply. In most cases, you might not need to take any further action.
Unfortunately, sometimes the only option left is to take the case to court and sue the possible infringer. In that case, you will have to prove that you own the trademark, that you were the first to use it, and that the other party’s trademark is likely to cause consumer confusion as to the origin of the product or service.
The courts may take other factors into account, such as:
- How distinctive the earlier trademark is;
- The level of similarity between the trademarks;
- The level of similarity between the products and services for which the trademarks are registered;
- The chance that the earlier trademark owner might eventually expand their business;
- Whether the earlier trademark was registered in bad faith;
- Actual consumer confusion;
- The degree of caution exercised by a typical consumer;
- The marketing channels;
- Defendant’s intent when choosing the trademark.
However, the most important ones are whether the goods and services are closely related and whether the trademarks are likely to be confused. This is assessed from the consumer’s point of view, and it’s not essential that actual consumer confusion has occurred.
If you are successful at proving trademark infringement, the court can prevent further unauthorized use, and you might get monetary relief.
If you’re in the US, file the lawsuit in federal court. Sometimes, depending on the circumstances, it is also possible to file the suit in state court.
How to make sure you can protect your brand?
Unless your brand is properly protected, you won’t be able to stop others from using it. The best way to protect your brand is to register a trademark because unregistered trademark protection is very limited.
First, assess which are the main countries where the brand name, logo or other important trademarks will need protection. The next step is to make a correct and accurate list of goods and services for which you want to protect trademarks. In the US, you will have to prove that you are actually using the trademark in relation to those products and services. I advise you to evaluate which are the most important trademarks and register these first.
If your trademark is not registered it can still be protected by state laws concerning unfair competition. However, I strongly suggest that you consider registering your trademark because you will only be able to stop others from using your unregistered trademark in the geographic areas where you operate. That might make it very difficult for you to expand your business.
What’s more, there is no presumption of validity and ownership when it comes to unregistered trademarks. You will also have a much harder time proving that you were the first to use the trademark in the area. The possible remedies, in this case, will be more limited and you won’t be able to get monetary relief.
To avoid possible infringement, inform others about your rights using symbols ™ and ®. Use ™ for unregistered trademarks and ® for registered trademarks.
To actually find out that somebody is using a trademark confusingly similar to yours, I advise you to regularly monitor your trademark. You might want to consider using a trademark watch service that monitors newly filed trademark applications for trademarks that are similar to yours and are applied for similar goods and services as yours. That way you will notice when someone applies for registration of an identical or confusingly similar trademark so that you can take timely action – for example, send a warning letter or file an objection to the registration of a competitor’s trademark.
In the EU, you also have the opportunity to use the help of the customs in the protection of intellectual property rights by submitting an official request to the customs authorities to take action for the protection of intellectual property rights. Regulation of the European Parliament and the Council of June 12, 2013, no. 608/2013 on customs work in the implementation of intellectual property rights provides that customs have the right to suspend the release of goods suspected of infringing intellectual property rights.
This will allow you to detect the import of fake goods in time. There are no official fees for this service, but you will have to agree in advance to cover the costs incurred by the customs authorities in connection with the destruction of the goods in accordance with the established procedure.
The protection of your trademark is in your own hands. Therefore:
- Make sure it is properly registered in all the territories where you want to use it,
- Watch the trademark,
- Act if you see confusingly similar trademarks being used or applied for registration.
