Trade mark infringement & passing off

Trade mark infringement

Has a competitor infringed your trade mark, logo or brand? Has someone passed-off themselves as you? Or have you been accused of infringing someone else's trade mark or passing off?

If you have a trade mark infringement or passing off issue we strongly encourage you to seek legal advice without delay. We specialise in handling trade mark infringement and passing off claims on both sides of the dispute and are able to help.

What is trade mark infringement

A trade mark is infringed when someone, for example a competitor, uses a sign or mark which is the same or similar to a registered trade mark for the same or similar goods or services.

Whether you are protecting your trade mark or responding to an accusation of infringement, getting professional advice is worthwhile as there are many pitfalls for the uninitiated. We can give you fast and cost-effective advice, tailored to your individual business needs.

What is passing off?

A passing off claim may be brought when someone passes off a business’ goods or service as their own by making a misrepresentation to the public.

To bring a claim for passing off you must show:

  • that you have goodwill in your business, goods, name, mark, or any other identifying feature.
  • there is a misrepresentation by the other party which may lead consumers to believe that their goods or services are actually yours (or associated with you).
  • that this misrepresentation has caused damage to your business’ goodwill.

What remedies are available for trade mark infringement and passing off?

Compensation for trade mark infringement and passing off will vary from case to case, but usually includes:

  • an injunction preventing the infringement.
  • recovery of damages or an account of the infringer’s profits.
  • delivery-up or destruction of any infringing goods.
  • recovery of a portion of the legal costs incurred enforcing the rights.

Cease and desist letters

Cease and desist letters can be a practical way of resolving trade mark infringement and passing off disputes without recourse to the courts.

If you are sending a cease and desist letter, you need to set out your rights, explain why they are infringed and explain what needs to be done and by when if the matter is not to escalate.

If you have received a cease and desist letter, you will need to give consideration to whether the intellectual property is valid and has indeed been infringed and, if so, whether the rights holder is entitled to the remedies they are seeking. You will need to respond within a given period of time setting out your position and, if appropriate, making an offer to settle.

Care needs to be taken in sending and responding to cease and desist letters. If you are considering sending or responding to a letter we strongly encourage seeking legal advice.

How we can help

We can help you with the following:

  • Assess the prospects of success for any trade mark infringement or passing off claim.
  • Prepare a cease and desist letter or, as appropriate, a response to any cease and desist letter, clearly setting out your position and complying with all requirements of the UK courts.
  • Look into practical ways to resolve your dispute without court action.
  • If your dispute is not resolved and goes to court, robustly presenting your case.

Why are we best placed to help?

We are a leading UK intellectual property firm, dedicated to protecting and enforcing our clients’ IP rights. We have specialised in IP protection for over 125 years and in 2017 we were awarded Managing IP’s Trade Mark Firm of the Year. Whether a large corporation or a start-up company, we are committed to providing only the best IP advice available.

They are very efficient and give excellent advice and support.

Chambers UK.

Bold advocacy in support of our company’s interests, with a finely honed sense of what is achievable in the real world.

The World Trade Mark Review 1000.

Contact us today
Request your free consultation.
infringement@dyoung.com 020 7269 8550

Free consultation

Contact us

+44 (0)20 7269 8550

Contact us with this form, by telephone or by email.

We offer a free initial consultation in order to help you understand the legal and practical issues relating to your case. This will enable you to decide what action to take, with no obligation to work with us at that stage.

We are known for our clear, reliable and cost-effective advice and have many years of experience of successfully protecting and fighting for our clients' rights.

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