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Trademark infringement

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redsturgeon
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Trademark infringement

#255057

Postby redsturgeon » October 1st, 2019, 7:48 am

We have a trademark that another organisation has infringed for a recently launched product in the same field as us.

We wrote to them pointing this out and their legal department has acknowledged our claim, says they consider it a serious issue and promised to get back, "in due course".

Obviously we are awaiting legal advice on this but has anyone any idea as to what "in due course" should reasonably mean and what should we do to encourage rapid action.

My immediate judgement is that we should demand complete cessation of marketing or promoting of their products and services carrying the disputed trademark until a resolution has been reached. Is this reasonable or enforceable or could they just carry on while they "investigate" the matter internally?

Has anyone here had similar experiences?

John

dionaeamuscipula
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Re: Trademark infringement

#255075

Postby dionaeamuscipula » October 1st, 2019, 9:22 am

redsturgeon wrote:We have a trademark that another organisation has infringed for a recently launched product in the same field as us.

We wrote to them pointing this out and their legal department has acknowledged our claim, says they consider it a serious issue and promised to get back, "in due course".

Obviously we are awaiting legal advice on this but has anyone any idea as to what "in due course" should reasonably mean and what should we do to encourage rapid action.

My immediate judgement is that we should demand complete cessation of marketing or promoting of their products and services carrying the disputed trademark until a resolution has been reached. Is this reasonable or enforceable or could they just carry on while they "investigate" the matter internally?


By "legal advice" I assume you mean from a trademark specialist? I would expect them to be advising you on action and I'd expect that advice to be coming to you fast.

I have some but limited experience of trade marks, but my view is act fast and act hard - seems to me they have done this deliberately. Subject to specialist advice, I would be sticking it up them big time - immediate cessation, undertaking not to do it again, injunction if they do not immediately comply, warning of significant damages, all your rights reserved. I'm assuming in the UK.

Last time we had an issue with this (we had been given incorrect information by a third party which led us to inadvertently break a trade mark in a particular territory, and yes, we should have checked) the aggrieved party served a writ on our trade show stand without prior warning.

Note that if you have an EU trademark that this will cease to apply in the UK post a no-deal Brexit. The UK will instead issue you with a direct copy UK trademark - but see the relevant Gov.UK page.

DM

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Re: Trademark infringement

#255076

Postby JonE » October 1st, 2019, 9:27 am

redsturgeon wrote:My immediate judgement is that we should demand complete cessation of marketing or promoting of their products and services carrying the disputed trademark until a resolution has been reached.

Relative sizes of the organisations may be relevant and just how closely the products and their respective markets are matched could be significant. It doesn't strike me as always being an altogether clear area of law and I'd expect specialists in the topic to be expensive.

When Ford introduced the Sierra they demanded that Dutton Cars stop using the name for their Escort-based kit car with off-road styling which they'd been marketing for a few years (I used to own one). Not the way round that one might have expected or that you may be anticipating in your circumstances but Ford felt they had the muscle to force the situation and launched their Sierra regardless of Dutton's representations to them.

The High Court held that kit-cars and factory-assembled cars were sufficiently different that Dutton could continue using the name - and that Ford could also continue to use the name for its newer product without harm being caused to Dutton. I retain a vague notion from the time that some money was reported to have flowed from Ford to Dutton but that may have been in relation solely to Dutton's hefty legal costs in defending its position.

Cheers!

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Re: Trademark infringement

#255081

Postby redsturgeon » October 1st, 2019, 10:11 am

Thanks for the responses. Our legal advice at the moment is via an associate group's retained legal services for speed of response (this only came to light on Thursday) while we are waiting for our insurers to decide whether we are covered. Yes I understand trademark cases are expensive and may not be clear cut and once we see whether we are covered or whether we would need to employ a specialist then we will make a decision on the next steps.

My immediate question is how much pressure we can put on them to immediately stop using the disputed trademark (we have sent copies of our certificate to them) or whether in law they are allowed to continue to use it while the dispute is resolved and if so in the event of a successful judgement on our part we can then sue for damages.

John

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Re: Trademark infringement

#255095

Postby dionaeamuscipula » October 1st, 2019, 11:21 am

redsturgeon wrote:Thanks for the responses. Our legal advice at the moment is via an associate group's retained legal services for speed of response (this only came to light on Thursday) while we are waiting for our insurers to decide whether we are covered. Yes I understand trademark cases are expensive and may not be clear cut and once we see whether we are covered or whether we would need to employ a specialist then we will make a decision on the next steps.


Its a highly specialised area of law. I wouldn't go ahead with any significant action without specialist advice. If the facts are clear then initial advice need not be expensive.

redsturgeon wrote:My immediate question is how much pressure we can put on them to immediately stop using the disputed trademark (we have sent copies of our certificate to them) or whether in law they are allowed to continue to use it while the dispute is resolved and if so in the event of a successful judgement on our part we can then sue for damages.


Depends on the facts and how clear cut, but you can put significant pressure on them right up to an injunction. If you send them a "cease and desist" letter or something similar and they ignore it (which they might) then if you are successful with a prosecution then you can definitely sue for damages, but be prepared to back any claim up .

In the case I mentioned previously we were bang to rights, so we withdrew the product from sale immediately, took all the marketing material off the web, and signed a letter promising not to be naughty ever again, as a result of which there was no court case and no damages.

Whereas a patent dispute in the US I was involved in lasted for nearly two years and almost bankrupted the company, even though we essentially won.

I should add that IANAL, and even less so a patent/trademark one.

DM

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Re: Trademark infringement

#255099

Postby redsturgeon » October 1st, 2019, 11:28 am

The legal advice we have had so far is that is is a pretty clear cut case in our favour.

John

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Re: Trademark infringement

#256255

Postby Clitheroekid » October 6th, 2019, 8:34 pm

One unusual - indeed, unique - aspect of IP law is that unwarranted `cease and desist' threats can give rise to a claim for damages. This is because of the little known Intellectual Property (Unjustified Threats) Act 2017.

Whilst your advisers will be well aware of this it's worth mentioning for any readers who may be in a similar situation and who may be tempted to save money by dispensing with professional advice and just sending their own C&D letter copied off the internet. It could be a very expensive mistake.

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Re: Trademark infringement

#256313

Postby redsturgeon » October 7th, 2019, 11:38 am

Clitheroekid wrote:One unusual - indeed, unique - aspect of IP law is that unwarranted `cease and desist' threats can give rise to a claim for damages. This is because of the little known Intellectual Property (Unjustified Threats) Act 2017.

Whilst your advisers will be well aware of this it's worth mentioning for any readers who may be in a similar situation and who may be tempted to save money by dispensing with professional advice and just sending their own C&D letter copied off the internet. It could be a very expensive mistake.



Very useful point CK.

In some ways though we would be in a better position if the other party were to counter claim since we have liability insurance for that!

John


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