What to do if someone infringes your trademark.
What should you do if you’ve got your trademark registered and you find out that somebody else is using it? First double check that your trademark is still valid, go on to the Intellectual Property Office register and double-check.
Each country has their own register and most of them are online these days. Search for the trademark register in your own country and pull up your trademark registration, there’ll be a status and usually it will say, “Registered” or “Renewal due” and then it’ll have a time in the future when a renewal is due. Once you know that the trademark is registered, you should also check the ownership details. Do you actually own it?
It could be that you registered it initially in the name of a company, which may have been since de-registered or it could be that you thought it was in your name but it isn’t. So you check that it’s registered, that it’s still valid, that it’s in your name and then next check and make sure that what the other person is using is the same or similar to what you’ve got registered. If you’re in doubt, speak to a trademark attorney who’s got experience with trademark disputes, because they’ll be able to tell you if the other person’s brand is too similar to what you’ve got registered.
If you’ve got a trademark application which isn’t yet registered, you’re not gonna be able to stop them based on your trademark. You might be able to stop them based on consumer laws or something else, but not based on your trademark. If I have a trademark called Blue Suit for lawn mowers and you have come up with a clothing range called Blue Suit, I can’t stop you because clothing and lawn mowers are very different. So sometimes it’s easy like for example, if your trademark is for clothing and the infringer is using it on clothing. Or if your trademark’s for being a business coach, and the infringer is using your name as a brand name on business coaching services.
But if the services differ, then it’s time to get professional advice and input. But if you’re confident that it’s the same kind of thing, the same kind of services, the same kind of goods, and a similar trademark, then simply write to the other person and let them know. You could say “Look, I’m not sure if you’re aware but I actually have a trademark registered for Blue Suit and what you are doing appears to be an infringing action. Please can you change your name?”
If you’re gonna write to them, keep it concise. Don’t include lots of sorries or lots of information, sometimes people will try to be nice and say “I know you might have used this trademark before I got mine registered.” But don’t say anything like that, instead just state the bare facts. “I have a trademark registered, here it is, you’re using the same thing. Please can you stop?” Fortunately most people in that situation will stop. My name is Cathryn Warburton, and I am the Legal Lioness.
