A registered trade mark gives you a number of options that you do not have without a registered trade mark.

The first step in stopping an infringer is typically to identify the infringer and obtain a sample of the product with the infringing trade mark. This makes it much easier for you and your attorney to check to make sure that the competitor’s use of the trade mark is actually infringing use.

Once this has been checked, the next action is typically to send a formal warning letter. Although not strictly a legal requirement, it is the normal practice to identify your rights, outline the infringing conduct, explain why the conduct is an infringement of your rights, and request that the infringer stop infringing, agree not to infringe again, and/or provide compensation for the infringement. Professional advice should be sought before sending any warning letter, as, depending upon how the letter is worded, it could give third parties the right to bring proceedings against you and/or may provoke them to challenge the validity of your rights.

Sometimes sending a warning letter brings about the result that you want, or a compromise is reached. If not, there are further actions that can be taken to enforce your rights.

Starting proceedings against an infringer is not a decision to be taken lightly. You have to decide whether it is worth the cost. You should weigh up issues such as:

• The value of the trade mark to your business;
• The costs that will likely be involved;
• The other, non-financial impacts that enforcement will have on the business;
• The extent to which the infringer can defend the action and/or pay any damages or costs.

Just because you have a registered trade mark and someone copies it does not mean that you have to take action. However, not taking action could dilute the value of your trade mark or render them unenforceable in the future. It makes sense to take action to enforce your trade mark rights if they are valuable and integral to your business.

If you do not have a registered trade mark but you have been using a trade mark and someone copies it, then you may still be able to take action. In the UK, and some other countries, use of a trade mark gives you ‘common law’ rights and although not as straightforward as enforcing a registered trade mark, it may still be possible. It is important to note though that in some countries, trade marks can only effectively be protected by registration.

Wilson Gunn can advise on all aspects of intellectual property protection. Please get in touch to speak to a member of our team about trade mark protection.