Action plan: infringement of your trademark
You are a trademark holder and you discover someone is using a sign that is identical or too similar to your trademark. How do you approach this?
Step 1 – Check your trademark
The first step is to verify if your trademark is validly registered, how it is registered (word, logo, both), who is registered as the holder, for which goods and services it’s specifically registered, and for which territory or territoires. If your trademark turns out to be unregistered, or not for the right goods or services, or not in the correct territory, you may still have trade name rights (regarding your trade name) or copyrights (for example, regarding a logo) that can be invoked. Sometimes it can also be useful or necessary to apply for an (additional) trademark registration.
Step 2 – Is it really infringement?
The second step is to determine if there’s actually trademark infringement. According to the law, this occurs if the sigsn is used in the course of trade and without your consent in one or more of the following cases:
- A sign identical to your trademark is used for identical goods and/or services
- A sign similar to your trademark is used for identical or similar goods and/or services, leading to confusion
- If you have a well-known trademark: a sign similar to your trademark is used for identical or different goods and/or services, unfairly taking advantage of or being detrimental to the reputation of your trademark
Step 3 – Does the infringer have a defense?
If you are convinced there is indeed trademark infringement, you must then check if the infringer has a valid reason for using their sign or if they could invoke another legal defense, such as using their own name or address, using it as a generic term or in a descriptive manner, or as an older trade name.
Step 4 – Ensure you have all the facts
The fourth step is conducting factual research. Is someone only using a word? Or also a logo, domain name, or trade name? How long has the infringement been occurring and how extensive does it seem? How and where exactly is the sign being used? Are there multiple parties using the infringing sign? It’s also important to determine how harmful the infringement actually is to your business and trademark, in the past, present, or future, so you can decide what it’s worth to take action.
Step 5 – Determine the first move
The fifth step is investigating the best way to approach the infringer. Depending on the factual situation, it might sometimes be better to first call the infringer or send a (cease and desist) letter requesting to stop the infringement as soon as possible, or sometimes to take more severe legal measures such as seizing infringing products to prevent them from disappearing. A seizure can only be done with the help of a lawyer, but you can, in principle, send a (cease and desist) letter yourself. In a (cease and desist) letter, you can explain that you are the trademark holder and that your trademark rights are being infringed and why. Then you request the third party to cease and desist from using the infringing sign, and you can also ask for other things such as disclosure of sold quantities and resulting turnover and profit, and information about supplier(s) of infringing products.
Step 6 – Consider follow-up steps if necessary
If the infringer refuses to stop using the sign after you’ve sent the (cease and desist) letter, you can choose to start a lawsuit, for example, summary proceedings or a full trial. In some cases, you may (also) be able to use other procedures such as domain name arbitration or a petition procedure to modify a trade name.
Conclusion
If someone is using your trademark, it’s important to carefully check if you have relevant trademark rights, if there’s infringement, and if the facts are such that you have a good case. You might have a clear-cut case that you can resolve yourself with a phone call or letter. If the situation is factually more complex or you’re in doubt, it’s recommended to seek legal advice before taking action.
Ms. Leonie Kroon
Lawyer
kroon@dillingerlaw.nl