Registering your trademark allows you to protect your name, logo, design, or a combination of these used to signify goods or services in relation to your business. Once registered with the relevant intellectual property governing body, your mark will be protected under trademark law. Under these circumstances, you disclose your ownership of the mark to the public and gain exclusive rights to your mark. Trademark registration means great business advantage, as you will now be able to challenge those who steal your assets legally, namely filing a lawsuit for trademark infringement.
What is Trademark Infringement?
Trademark infringement, also known as trademark violation, is the unauthorised use of a trademark belonging to someone else without permission. This illegal use of a mark is commonly in connection with goods and services and can cause confusion, deception, or a misunderstanding about the origins of the good or service.
What Action Can I Take to Stop Trademark Infringement?
Contact A Trademark Professional
A trademark professional will take all aspects of your lawsuit into consideration and provide advice accordingly. This can include discussing various aspects of the trademark infringement case, such as degree of similarity between marks, closeness in classes of goods or service which may cause confusion amongst consumers, malicious intent in using the mark and more. These factors are crucial in establishing the validity of your claims against the accused. Therefore, a trademark professional will discuss a range of these aspects with you in detail prior to filing a lawsuit to determine the strength of the evidence at hand to produce the best possible outcome for the lawsuit.
It is possible for a trademark owner to assume a case of trademark infringement, only to discover that the mark in question is used fairly after further investigation. Such circumstances can unfold when taking several factors into account, such as proximity of goods of both marks. For example, a business may utilise a similar mark whilst selling goods or services strongly differentiated from the accuser’s own. In this case, the accuser’s stance is weakened as judges may conclude that customers are unlikely to confuse the source of goods or services sold. (i.e. tablets and ebook readers are similar; tablets and sports apparel are not.)
A trademark professional with extensive experience in handling trademark infringement lawsuits will be your best asset in responding to a third party infringing upon your mark.
Send A Cease-And-Desist Letter
The first step in dealing with a trademark infringement case is to send a cease-and-desist letter to the accused. The purpose of this letter is to provide a brief explanation of the infringement to the party who has violated your intellectual property. It is advised to inform the accused of the infringement prior to filing a lawsuit, as they may not have knowledge of your trademark or have not conducted a trademark search prior to utilising the mark. A cease-and-desist letter will notify the accused of existing circumstances, and to cease their usage of the mark within a certain period of time. Should the accused ignore your letter, you may use this as evidence in court that negotiations between both parties have taken place and failed.
A trademark professional can write a cease-and-desist letter on your behalf, which will include details such as trademark registration number, registration date, classes of goods or service of the mark, evidence of infringement and more.
File A Lawsuit In High Court
If a cease-and-desist letter has been ignored and the accused has continued their usage of the mark, the next step is to file a lawsuit in the appropriate court in your country. In Malaysia, the lawsuit may be initiated through the High Court. The accused will be legally stopped from using the infringing mark. Should the accused ignore the court order, they can be liable for contempt of court which may result in fines. You may also sue the accused for monetary damages based on the amount of profit the accused has made as a result of the infringement. Willful infringement of the mark will result in a greater amount of monetary damages to be paid to the trademark owner.
Filing a lawsuit is expensive and time consuming, therefore it is important to take precautionary measures to prevent trademark infringement from happening in the first place. The best course of action is to firstly, register your trademark as soon as possible and secondly, to ensure proper usage of your trademark, such as actively using trademark symbols to inform competitors of your intent in protecting your intellectual property.
We know intellectual property rights can be confusing – that’s why it’s important to discuss your concerns with an IP professional first, to determine your plan of action later. Our experienced team at Quality Oracle are at the helm to quell your IP worries. Get in touch for a free consultation today.