In the UK and EU, trademark infringement occurs if another party, in the course of trade, uses a sign that is identical or similar to your brand in relation to similar (and even dissimilar) goods or services. Notably, the infringing sign does not need to be identical and it does not even need to be used in respect of similar goods or services.

In addition, well-known brands are frequently targets for this type of activity, with disingenuous competitors offering poor-quality or inferior substitute goods and services. When this happens, businesses can pursue legal action to protect their trademark and brand reputation, as part of this they can seek compensation from the courts, an injunction and the infringing goods being destroyed or taken away.

You can still be caught. Trademark infringement also covers instances where a similar sign is used in relation to identical or similar (and even dissimilar) goods or services. It is best to speak with one of our IP experts to assess whether you are able to use that brand. 

You may be able to take action by passing off action (if you do not have a registered trademark) and/or claiming trademark infringement. To ensure that you are not guilty of making a “groundless threat” and correctly identify the nature and basis of the infringement you should seek legal advice first. 

If a party makes groundless threats of trademark infringement, you may be entitled to bring a claim against that party and may be entitled to damages. Given this you should always seek legal advice before approaching a suspected infringer.

How quickly do I need to act to stop my competitor from using my brand?
The faster the better, especially if you are suffering extensive damage and wish to immediately stop the infringer by way of an interim injunction application. You should gather as much evidence as possible of the infringing activities and any instances of confusion within the marketplace between your brand and the competitors.

No. Companies House has a separate set of rules that must be complied with upon registering a business name. They are concerned with identical names. Trademark infringement can concern similar and even dissimilar names.

It is an action before the relevant IP registry (i.e. IPO) to remove the trademark from the register. Grounds for this action include non-use for the period of five years since its registration, the mark has become misleading or commonplace.

This is an action brought against a trademark before the relevant IP registry (i.e. IPO). The application will argue that for reasons that subsisted at the time the application was granted the trademark should not have found its way onto the register. Once declared invalid, the trademark will be deemed never to have been registered.

This is an action brought by a third party before the relevant IP registry (i.e. IPO) to formally object to an application for the registration of a trademark. A third party can rely upon the absolute ground or relative grounds of refusal. Absolute grounds concern matters arising from the trademark itself (i.e. the mark is descriptive), whereas relative grounds rely upon the existence of earlier trademarks or rights.

The EUIPO is responsible for the registration of Community trademarks and Community designs. It was previously known as the Office for Harmonisation of the Internal Market (OHIM).

The TM symbol can be used to indicate that an unregistered trademark exists in respect of that particular branding (i.e. word or logo), which serves to identify the source of certain products or services supplied under the branding. Many companies will opt to use the TM symbol for new goods or services in advance of and during the trademark application process.

The R symbol indicates that the brand in question (i.e. word or logo) is a registered trademark for the product or service. It must only be used in the case of registered trademarks. It also must only be used in the regions in which you possess a valid trademark registration.

If you don’t have a trademark, you can still stop a third party from using your brand by relying on your “unregistered trademark”. Such unregistered trademarks may be used to prevent others from using the same or confusing trademarks under passing off.

You should take advice on bringing a trademark opposition before the relevant IP registry (i.e. IPO or EUIPO).

Passing off is based upon the premise that nobody is entitled to present their goods or services as being those of somebody else. To succeed with a passing off claim, you will need to show goodwill in your goods/services, that there has been a misrepresentation that leads consumers into thinking that the goods/services offered by the defendant are yours, and that damage has resulted or is likely to result as a consequence of the misrepresentation.

Before launching a new brand, we can assist by carrying out clearance searches in respect of the new brand that you propose to launch. By undertaking these searches before launching a new brand, there is less chance of you facing future trademark infringement actions or opposition proceedings, which can be costly.

Most literary, dramatic, musical works, databases, sound recordings, films, broadcasts and artistic works (photographs, sculptures, works of architecture and other artistic craftsmanship), including published editions. 

Copyright does not protect ideas; only particular expressions of ideas. For example, the idea of a story involving a girl being cast away on a beach does not attract copyright, but the written story that follows that pattern is likely to be protected.

The life of the author plus 70 years from the end of the year of death (or in the case of films, 70 years from the death of the longest surviving of certain specified people involved in making the film). 

Computer-generated works, broadcasts and sound recordings are protected for 50 years. 

In respect of sound recordings, protection may be extended to 70 years if the recording has been published or made available to the public within the initial 50 years. 

Published editions have 25 years of protection.

Copyright arises automatically when the work is created. No registration is required.

When the work is recorded in a permanent form. Copyright is only available for original work.

The copyright owner has the exclusive right to copy the work, issue copies to the public or adapt it, translate it or perform it in public. The owner can grant licences to others to use the work. However, it is not a monopoly right, it does not prevent a third party from having rights in and exploiting an independently created identical work. Further, there are certain limits on the right holder’s exercise of its rights, including fair use allowances and parody exceptions.

The general rule is that the author (or creator of the work) is the first owner of the copyright. However, the main exception to this is where the work was made by an employee in the course of their employment. In such instances, the employer is the first owner of the copyright.

Copyright is the right that prevents anyone from copying, or even being inspired by, your work. It also prevents third parties from doing other “restricted acts” such as communicating the work to the public. This protection comes into effect automatically whenever a literary, dramatic, musical or artistic work is created, as well as recorded sounds, films or broadcasts.
Through copyright laws, third parties are prohibited from:

• Copying your work
• Distributing copies of your intellectual property, whether for free or for-profit
• Renting or lending copies of your work
• Adapting, performing, showing or playing your work in public
• Putting your work on the internet

If any of these are done without your permission, you may be able to make a copyright infringement claim.

A copyright notice includes the copyright symbol © together with the year of creation and the owner’s name. It’s not a legal requirement in the UK to use this notice but it is useful. It identifies the copyright owner if people want to approach the owner to gain permission to use the works. Further, it can be useful in an infringement claim should the other side allege that they have innocently infringed.

Database rights can be used to protect contact cards, customer lists, mailing lists, directories, timetables and order histories, regardless of whether they exist in paper or electronic form.

In order to qualify, the database must meet the following criteria:

• A collection of independent works, data or other materials - the data itself must have been taken from an independent source, i.e. it must be data that already exists
• Arranged systematically/methodically and individually accessible - protected databases can be arranged by alphabetical order, customer number order or by geographical area, for example, and entries should be accessible individually when necessary
• Substantial investment in the contents - this can relate to the quality or quantity of the data, labour time, cost or the use of technology to assemble the database. As such, most databases of any value will be protected under this definition

Database rights arise automatically and are owned by the person who takes effective responsibility for putting together the database. Anything created during the course of employment is likely to be owned by the employer.

Licences may be given to others to use the database, but this does not usually mean the ownership will pass from the original owner.

Database rights last for 15 years from the date of creation, but can be valid for much longer if the data is being continually reviewed and updated.

Almost all businesses retain a database of key information, such as private details about customers or accounts, that must be kept safe and confidential. If you suspect a competitor has accessed private information or an employee has used information for their personal gain, it may be possible to launch an intellectual property dispute.

Your database rights are infringed if someone who is not the owner of it extracts or reuses a substantial part of its contents without permission. This could include making a paper copy, emailing its contents to any other person or publicising any part of the database.

The general rule is that the author (or creator of the work) is the first owner of the copyright, and not you the commissioner, unless you otherwise agree to it in writing. This can often come as a surprise to the commissioning party. It is therefore important to check your agreement when engaging a third party to create something for you.

The law of confidential information generally applies for as long as the business wishes to keep the data confidential. There may be instances in which data needs to be disclosed to specific parties as part of a business venture or legal process, in which case, other legal agreements need to be put in place to preserve the confidentiality of the information.

A business’s confidential information is a vital asset, and the leaking of this data can damage the organisation’s competitive position and profitability. When this occurs, an intellectual property dispute may be launched.

In a world where information can be distributed in an instant via digital communication and media, the risk of confidential data falling into the wrong hands has risen. Most businesses will invest time, money and resources to develop business-critical data, which should be protected fiercely from misuse, just as any business would take measures to protect its physical assets. 

If a confidentiality agreement is unlawfully broken, the wronged party may be able to make a claim against the business or individual responsible to seek damages.

If the defendant has been found to have misused confidential information before they have actually disclosed it, it may be possible to seek an injunction to prevent this from happening. If the information has already been disclosed, then an injunction is less likely to be obtained, but the defendant may need to compensate the claimant for any losses incurred, or pay them an amount calculated in relation to the fee they would have had to pay to use the information lawfully.

A patent is an exclusive right used to protect inventions, such as new products and processes. In the UK, a patent lasts 20 years. To be successful upon applying for a patent, it must be new at the time of filing and cannot be something that would have been obvious to a person of ordinary skill in the relevant technical field (and therefore involve an “inventive step”). The invention must also be capable of being used in industry. To get a patent, technical information about the invention must be disclosed to the public in a patent application. The owner of the patent can prevent others from making, using, importing or selling the patented technology.

A granted patent will have a set of “claims” that set out the breadth of the patented invention. Patents are complicated documents, therefore, you should seek professional advice upon attempting to understand a patent and whether your activities fall within those covered by the patent.

Any activities that involve making, supplying, selling, using or importing a patented invention can count as a direct infringement of the patent rights. Indirect infringement covers cases of providing part of the patented technology to another party, or working with someone such as a customer to put on the market something that is covered by a patent.

Before launching your new technology, you should carry out clearance searches to determine your “freedom to operate”. By undertaking these searches before launching, there is less chance of you facing future patent infringement actions, which can be costly.

A cease and desist letter typically requests that a business stops a specified activity and refrains from doing so in the future, with a threat of legal action if the recipient fails to comply with the requests made. This is something you should seek legal advice on if your IP rights are being infringed.

In the English intellectual property courts, it is common for there to first be a trial to decide on infringement (the liability trial), and if the IP rights owner succeeds, there is then a separate trial about damages caused (the quantum trial, also known as the inquiry as to damages or an account of profits). This system is often referred to as a 'split trial'.

Damages will be awarded to compensate the claimant for its loss arising out of the infringement. The IP rights owner must prove its loss was foreseeable, and that it was caused by the infringement.

There are three main ways to calculate damages:

1. Lost profits from sales the claimant would have made but for the infringement. This is on the basis of proving that the infringer took sales away from the claimant.
2. Where the claimant grants licenses to others to exploit its IP rights, damages should be calculated on the basis of the royalties the defendant would have paid, had a licence been granted (“the user rate”). This royalty-based damages assessment concerns the sum that the claimant would have received if it had been in a willing licensor/licensee relationship. 
3. Where it is not possible to prove either that there is a normal royalty rate in the industry, or an established royalty rate based on the IP rights owner’s other activities, a hypothetical royalty rate will be decided by the court based on all the evidence, taking account of the realities of the particular marketplace.

An account of profits is a remedy to (i) prevent an infringer from being unjustly enriched by the infringing activity and (ii) to deprive an infringer of any profit it has made from that activity. The relevant profits are the net profits made by the infringer.

Usually, this will involve examining the defendant’s accounting records in detail (perhaps even with a forensic accountant) to determine what profits can be attributed to the wrongful act in question.

The IPEC is a specialist court of the Intellectual Property List (Chancery Division). It handles cases concerning intellectual property disputes, including registered designs, patents, registered trademarks, copyrights, and other intellectual property rights

The IPEC aims to provide cheaper, speedier and more streamlined procedures to ensure that small and medium-sized enterprises, and private individuals, are not deterred by the potential cost of litigation to safeguard their rights.

Claims in IPEC are typically limited to a value of £500,000 (not including costs). A significant advantage to issuing in the IPEC is that the losing party’s costs exposure is capped at £50,000 when determining liability and £25,000 upon determining quantum, and within the overall cap, there are limits for each stage of the litigation. The court has the discretion to exceed these caps, but this is rarely exercised.

The Intellectual Property List includes three sub-lists where IP matters may be heard: Intellectual Property, Patents Court and the IPEC, and is part of the Business and Property Courts of the High Court. The JMW IP team works across all of these courts at any given time. 

The broad position is that the employer will own all IP rights in the fruits of employees’ work, as long as the work was made in the course of the employee's normal duties. The grey area here is “what are your normal duties?”, i.e. does the work which you have created fall within the nature of your job? If there is any uncertainty on such issues you should contact the IP team at JMW.

The cost of litigation depends upon the facts of each case. However, our indicative costs of the first stages of most litigation matters include:

1. Preparing a Note of Advice setting out likely outcomes, around £500 + VAT 
2. Preparing a Cease and Desist Letter, around £1,000 + VAT

As a matter of criminal law, certain copyright, design and trademark infringement can give rise to a criminal offence. For copyright infringement, it may concern piracy, counterfeiting for trademark infringement and intentional copying for registered designs.

We can work with you to devise a strategy to help combat counterfeiters that are threatening your business. We have experience in deploying a range of strategies. Some of the options available include: 

• (i) working with UK customs to ensure that when infringing goods arrive at the border appropriate action is taken,
• (ii) monitoring services, 
• (iii) following notice and takedown procedures on various platforms including Amazon, Facebook and Ebay, 
• (iv) obtaining search and seizure and freezing orders, along with injunctions, 
• (v) issuing cease and desist letters to infringers and following this up with court proceedings where necessary.

1. Not registering a trademark. This includes failing to take prior rights searches before applying for a trademark using the brand in question. IP specialists should also be engaged to ensure the specification (goods and services) of the trademark is correctly drafted.
2. Failing to keep a documentary trail throughout the development of a new product. This is necessary to show originality and independent creation
3. Ensuring agreements with third parties who create IP for you correctly assign the relevant rights. Paying does not equate to IP ownership.
4. Leaving infringements to carry on for too long before taking action. This can impact the options available to you. For example, it may be harder to gain an interim injunction to stop the infringer.
5. Engaging directly with a party in respect of infringements before taking legal advice and inadvertently undermining the merits of their case.

First of all, seek legal advice. At JMW, we can devise a strategy best suited to your business and circumstances. Typically, this may entail issuing a cease and desist letter, requesting that the infringement stops immediately. If the other side does not cooperate, court proceedings may be issued. 

JMW has extensive experience in all of the IP specialist courts, including IPEC.

Injunctive relief, also known as an “injunction,” is a legal remedy that a court may order to stop a party from doing something, or even require them to do something. For example, stopping your business from selling an infringing product.

In mediation, a neutral intermediary, the mediator, helps parties to reach a mutually satisfactory settlement of their dispute. Any settlement is recorded in an enforceable contract. 

Mediation is an efficient and cost-effective way of achieving a settlement of the matter. An advantage of mediation is that the terms of the settlement are bespoke to the parties and the parties are free to agree to something that the courts may have not otherwise ordered. 

Sometimes mediation can preserve, and at times even enhance, the relationship of the parties.

A website or domain name is a piece of intellectual property that is vital to your online identity and marketing. A legal case can be launched when another user has created an online asset that violates trademark or copyright laws, or when they have registered a domain name for cybersquatting or other abusive purposes.

Legal advice should be sought as soon as possible to ensure you are fully protected and your business’s success is not put in jeopardy.