Trade marks

Registering a trade mark doesn't guarantee you that your mark will never be infringed. However, it does give you exclusive rights to use the mark and to prevent its unauthorised use on goods and services that are identical or similar to yours.

Use trade mark symbols to claim your rights

When you register a trade mark in the UK, you can use the ® symbol to indicate that you own the mark. For unregistered trade marks, you may use the abbreviation TM.

The use of these symbols has no legal significance, other than showing to the public that you claim the trade mark rights. This may help deter others from using the mark without your consent.

How to deal with conflicting trade marks?

If someone tries to register a trade mark that is identical or similar to yours, you can oppose, object or consent to the registration. The right course of action will depend on your specific circumstances. See objecting to and challenging trade marks.

If you wish to use a trade mark, but find that someone had already registered it in bad faith, or hasn't used it in the course of trade, you may apply for invalidation or revocation.

What constitutes trade mark infringement in the UK?

Unauthorised use of a registered trade mark (or a confusingly similar sign) on competing or related goods or services may constitute trade mark infringement.

For infringement to occur, the use of the mark has to be:

• without consent of the registered mark owner
• in the course of trade, ie with a view to profit financially
• in the territory where the trade mark right is registered

Infringing acts may include (among others):

• affixing the trade mark to goods or their packaging
• offering goods for sale or supplying services under the trade mark
• importing or exporting goods under the trade mark
• using the trade mark on promotional material or in advertising
• preparing to counterfeit your goods (eg use your mark on packaging, labels, etc prior to making counterfeits)
• using a company name that conflicts with your trade mark

Marks of confusing similarity

A mark doesn't need to be identical to one already in use to infringe upon the owner's rights. A confusingly similar mark may infringe registered rights if it:

• has caused or is likely to cause confusion, or mislead customers into believing that the goods and services originated from the registered trade mark owner
• damages or takes unfair advantage of the significant reputation of the registered mark (even if it's used on dissimilar goods and services)

Dealing with trade mark infringement

In order to take action against infringement, you must typically be able to prove that you own the trade mark right and that the infringing conduct is illegal. There are many options for dealing with trade mark violation, including:

• sending the alleged infringer a 'cease and desist' letter
• reaching licensing or coexistence agreements
• mediation, arbitration or settlement out of court
• applying for injunctions
• suing for damages or lost reputation and profits

Read more on defending trade marks against infringement. For defending unregistered trade marks, see passing off: definition, remedies and defences.

If you are concerned that someone is infringing your trade mark rights, you should seek prompt legal advice from a trade mark attorney or an experienced IP professional. Find a chartered trade mark attorney near you.