Discovering that another business is using a mark similar to yours is unsettling. Acting too quickly — or too slowly — can make the situation worse. Here is how to assess the position and respond effectively.
Is It Actually Infringement?
Before you act, assess whether what you are seeing is actually trade mark infringement. A registered trade mark is infringed if a third party uses, in the course of trade, a sign that is:
- Identical to your mark in relation to identical goods or services
- Identical to your mark in relation to similar goods or services, where there is a likelihood of confusion
- Similar to your mark in relation to identical or similar goods or services, where there is a likelihood of confusion (including the likelihood of association)
- Identical or similar to your mark in relation to any goods or services, where your mark has a reputation and the use takes unfair advantage of, or is detrimental to, that reputation (applies to well-known marks)
The "likelihood of confusion" assessment considers visual, phonetic, and conceptual similarity between the marks, and the similarity of the goods or services. Imperfect recollection is the standard — the average consumer does not hold marks side by side.
If your mark is not registered, you may still have a passing off claim — but you need to establish goodwill, misrepresentation, and damage. Take advice on whether passing off is available to you.
Gather Evidence Before You Act
Before sending any correspondence, gather evidence of the infringement:
- Screenshots of the infringing use with dates
- Printed copies of websites, social media, and marketing materials
- Examples of the goods or services in question
- Evidence of your own use of the mark and the goodwill attached to it
- Any evidence of actual confusion — customer enquiries, social media comments, misdirected correspondence
Evidence gathered now is far more useful than evidence gathered after the infringer has changed their behaviour.
The Cease and Desist Letter
The standard first step is a solicitor's letter requiring the infringer to stop using the mark, change their name or branding, and provide undertakings that they will not repeat the infringement. The letter should be carefully drafted.
An aggressive letter that overstates your position or makes threats that you cannot follow through on can backfire. An unjustified threat of trade mark infringement proceedings can give rise to a claim against you under the Intellectual Property (Unjustified Threats) Act 2017.
The letter should accurately describe your trade mark registration, identify the specific infringing use, explain why it infringes, and set out the remedies you require with a reasonable deadline.
Negotiating a Resolution
Many trade mark disputes settle without litigation. The infringer may not have been aware of your mark. They may be willing to rebrand with a transition period. They may agree to limit their use to a different territory or class of goods.
Mediation is available for IP disputes and is often cost-effective. The UKIPO offer a mediation service. Even where litigation is ultimately necessary, a mediated settlement at an early stage saves significant time and cost.
UKIPO Proceedings
If the infringing party has filed a trade mark application for the mark, you can oppose it at UKIPO. Opposition proceedings are cheaper than court litigation and are resolved by the UKIPO's hearing officers. You can also apply to cancel an existing registration if it conflicts with your earlier rights.
Court Proceedings
Where the infringer will not stop, injunctive relief from the court is the most effective remedy. An interim injunction — requiring the infringer to stop immediately pending trial — can be granted quickly where there is a serious issue to be tried and the balance of convenience favours stopping the infringement now.
Court proceedings for trade mark infringement are decided in the Intellectual Property Enterprise Court (IPEC) for smaller claims (up to £500,000 in damages) or the High Court. IPEC costs are capped, making it accessible for SME rights holders.
Take advice before you litigate. The merits, the costs, and the practical outcome need to be assessed together.
Bonsai Law's Chartered Trade Mark Attorney and accredited mediator defends trade marks for businesses across the UK — from cease and desist through UKIPO opposition to IPEC proceedings. If you have spotted an infringement, get the evidence and the strategy right from the start.
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