Intellectual Property Disputes, Passing Off, Breach of Trademark, Copyright, Cease and Desist Letters

Well-Known World Brand LogotypesSteven Mather is a specialist Intellectual Property Disputes Solicitor based in Leicester. My practice covers a wide range of IP based disputes including:

  • Trademark Registration
  • Trademark Registration Disputes / Opposition to Trademark Registration (Form TM7 at IPO)
  • Passing off Disputes
  • Copyright Disputes
  • Online disputes
  • Cease and Disist letters

Trademark Registration Solicitor

Although I am primarily a litigation solicitor in Leicester I also deal with non-contentious work. Registering Trademarks is a favourite of mine. Its fair to say that I am a Trademarks Lawyer, and there aren’t many solicitors in Leicester that deal with trademark registration.

A trademark is a “brand” for any business, although it could be for its products or services, or the business name or identity itself. For some businesses, the Brand is highly valuable and it can be a deciding factor for people to purchase.

As the Government website IPO.GOV.UK says:

“When you register your trade mark, you’ll be able to:

  • take legal action against anyone who uses your brand without your permission, including counterfeiters
  • put the ® symbol next to your brand – to show that it’s yours and warn others against using it
  • sell and license your brand”

There are lots of rules about trademark registration, so rather than waste time and energy, you would be well advised to instruct a trademark solicitor to carry out the registration for you.

Any trade mark must be unique. It can include:

  • words
  • sounds
  • logos
  • colours
  • a combination of any of these

Your trade mark can’t:

  • be offensive, eg contain swear words or pornographic images
  • describe the goods or services it will relate to, eg the word ‘cotton’ can’t be a trade mark for a cotton textile company
  • be misleading, eg use the word ‘organic’ for goods that aren’t organic
  • be a 3-dimensional shape associated with your trade mark, eg use the shape of an egg for eggs
  • be too common and non-distinctive, eg be a simple statement like ‘we lead the way’
  • look too similar to state symbols like flags or hallmarks,

If you ask me to register a trademark, then I will:

  1. Carry out a search to ensure your trade mark will not infringe another
  2. Consider whether it is likely to be registerable in accordance with the Trade Marks Act 1994
  3. Consider which classifications (classes) to register your trademark
  4. Prepare the application and submit it with the Intellectual Property Office directly
  5. Once published, store your Registration Certificate for no additional charge.

A trademark can be a logo or a word. If you want full protection and your logo has words on too, I always recommend two separate applications.

My firm, Josiah Hincks Solicitors in Leicester offer Trademark Registration for a fixed fee. Whether you are based in Leicester, the Midlands or the United Kingdom, I can help you register your trademark.

Trademark Infringement / Passing Off Disputes

I am regularly instructed to bring or defend trademark and passing off disputes. It is a specialist area, and therefore it would be unwise simply to contact a standard civil litigation dispute resolution solicitor. It is likely that any trademark or passing of litigation will be reasonably high value, may require urgent advice and injunction proceedings and will require good knowledge of trademark law.

There are two stages to trademark disputes. 1) Opposition to Trademark Registration and 2) trademark infringment litigation.

If you already have a registered trademark, then if someone registers something similar, then often the IPO will notify you as brand owner. However this is not guaranteed. You should therefore be aware if someone does seek to register a mark similar to yours. Equally, you might be trying to register a mark and find out that there is already something similar.

As a trademark opposition solicitor I can help you oppose Trademarks prior to registation by the Intellectual Property Office. I can prepare all of the necessary forms (TM7 etc) and legal submissions required for the IPO tribunal to decide what to do. There are strict time limits on opposing a trademark, so your solicitor will need to know what they are doing, in order to be successful.

The second stage will be trademark litigation. I usually conduct my trademark dispute cases in the IPEC Court (Intellectual Property and Enterprise Court) as the judges are much more savvy and knowledgable about trademark law than your usual district Judge in a local County Court.

Trademark Litigation and Passing Off disputes are highly complex and require a detailled working of trademark law and passing off law.

Trademark Law stems from the Trade Mark Act 1994, along with case law. Section 14 Trade Mark Act 1994 allows for claims to be brought for trademark infringment and allows you to claim for damages, injunctions, accounts of profits etc. Section 10 Trade Mark Act 1994 sets out what infringement of a trademark means. It can be:

  • Using the actual registered trade mark in an identical way
  • Using an identical sign (trademark) to promote similar goods/services
  • Using a similar trademark on identical goods
  • Using identical/similar mark in a different classification, where the trademark has a reputation

As you can see, Trademark Law is complicated and so if you are involved in any kind of trademark dispute, then please contact me for advice.

Supplementary to Trade Mark Infringment Disputes is Passing Off and Passing Off Disputes.

Passing Off is a tortious claim (Law of Torts). In brief, it is where someone uses a Mark (registered or unregistered trade marks) to pretend to be, or sell off the back of, another business’s brand. Passing off requires three things (called the classic trinity test):

  1. Goodwill – The infringed mark must have a reputation and goodwill attached – does the public look at the mark and identify who the brand owner is?
  2. Misrepresentation – the Defendant must have confused the public to believe that his goods were actually the trademark owners goods
  3. Damage – has the trademark owner suffered damage as a result

In the case of passing off the following remedies are available:

  • Damages or an account of the defendant’s profits
  • An order for the delivery up or the destruction of the infringing articles or products
  • An injunction
  • An enquiry to establish loss

The following can be used as defences against a claim of passing off:

  • The claimants mark, slogan etc is not distinctive
  • The mark, slogan etc has become generic
  • The defendant may be innocently using his or her own name
  • The claimant has given consent

Steven Mather is a Passing Off Law Solicitor based in Leicester.


Cease and Desist Letters / Letters of Claim re Trademark Infringement and Passing Off

The American’s call these letters “cease and desist” letters. We don’t in the UK, we simply call them letters of claim or more accurately letters before action. As an intellectual property disputes solicitor, I write many of these letters every year.

The Law says that if you threaten legal action and its unwarranted, you can be held liable for costs. So always think before you jump.

My letters will set out exactly what your trademark is, what the infringment is (linking it to the correct law), consider passing off, state what damages you are suffering and demand that they stop immediately. I will often require the defendant to enter into an agreement, also referred to as Undertakings, to confirm in a contract that they will stop and not infringe your trademark again.

Alternatively, you may have received a letter re trademark infringement / passing off, and need to defend your business. In this situation, I can also assist.

Steven Mather
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Steven Mather

Partner at Josiah Hincks
I'm Steven Mather, Litigation Solicitor and Partner at Josiah Hincks Solicitors in Leicester. We've been established since 1927, have 5 offices across Leicestershire with over 50 staff. That makes us as one of the leading law firms in Leicestershire.

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Steven Mather
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