May 25
Just because a trade mark has been officially registered does not automatically mean that it can be enforced against other businesses for the rest of time.
A trade mark has to be used genuinely in the area of business that it was registered for. It is not permitted to register a trade mark that a business does not intend to use in order to prevent competitors from using it and to monopolise the market.
If you are a small or medium size business, you may have worked hard to become an established brand and to enjoy a level of trading success. Part of your business is likely to rely on a recognisable name or logo, which you have carefully cultivated and which allows you to be distinguished in your market. But what if a competitor writes to you and argues that you are breaching an existing trade mark?
It is important to seek legal advice promptly when you receive such a letter to ascertain whether the other organisation might have registered the trade mark in bad faith, or whether there is another reason that it cannot be enforced, even if officially registered. For example, because the coverage sought was actually too wide to validly need the protection of a trade mark.
If someone believes you are infringing their trade mark, you could be subject to one or more of the following:
Anyone who believes you are trading using what they have already registered as a genuine trade mark will first issue you with a ‘cease and desist’ letter, telling you to stop using their trade mark. They may also ask for damages (compensation) from you for the unlawful use of the trade mark to date. A ‘cease and desist’ letter will state what action may be taken if you do not comply and stop the use of the trade mark immediately.
If you do not comply with a ‘cease and desist’ letter, then it is likely the trade mark owner will issue a claim against you in court. However, these can take a long time to get to trial and, in the meantime, the owner may apply for an emergency injunction to stop you from continuing the breach until the trial can be heard. This is used to stop what they will consider to be a dilution of their trade mark and prevent the damage that would occur as a result.
Ultimately an entity who believes you have infringed their trade mark will bring their claim to court to adjudicate if you do not concede the infringement. You may be able to challenge a claim even if the trade mark was registered on the basis that the trade mark was registered in bad faith and therefore is not valid. If so, you will also claim damages and your legal costs of attending court. Of course, if you are not successful, there will be consequences to your business and costs.
If you believe that trade mark action against you is brought using a trade mark created in bad faith, it is vital that you take legal advice at an early stage on your options to defend both a claim, and an injunction application. A successful injunction can have a significant effect on your business, even if later at trial it is found that the application should never have been made. The damage may be irreversible by then.
If you trade via an online platform, you might also receive a notice from them.
An online sales platform, such as eBay or Amazon, may be served with a ‘takedown notice’ by a company that claims you are breaching their trade mark. Sites such as Amazon have to preserve their own legal position, and so may take down your site on the basis of an application by someone claiming a trade mark breach which looks reasonable.
You can appeal this, but this can take time and is not guaranteed to be successful. If you find yourself in this position it is vital that you take advice as soon as possible. If the platform will not reinstate your site or products because a trade mark is registered, legal help may be needed.
If the other trade mark was registered in good faith, then the consequences to your business of using a name in breach of that trade mark can be significant, and to be avoided if possible. As a minimum, you will be asked to stop using the trade mark. This may mean overhauling your website, changing your packaging and your stationery, and replacing logos
A successful injunction against you will be even more damaging. Not only will the end result be that you stop using the trade mark, but you are likely to have a hefty legal bill and possibly have to pay damages for misuse.
There are several criteria that must be complied with when registering a trade mark. The primary concern is that the trade mark is clear and distinctive, and it must be distinguishable from other similar trade marks.
It must also be distinctive to your particular business. A good example of this is the name Coca-Cola.
It cannot be so wide that it is used generally in the area of your business. For example, you could not trade mark the words ‘computer services’ as this is already widely used.
It also has to be used in the area of business that you operate in, and genuinely be required for your business. It is not allowed to register a trade mark that you do not use in order to prevent it being registered by a competitor and to monopolise the market.
A trade mark must be used regularly, or it can be subject to cancellation.
Importantly, you must sign a declaration on the application form that you have a genuine intention to use the trade mark.
Please contact Jonathan Mortimer, Partner in the Dispute Resolution team at Raworths based in Harrogate, North Yorkshire.
Published on 19 May 2025
This article is for general information only and does not constitute legal or professional advice. Please note that the law may have changed since this article was published.
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