The short answer is yes. Owning trade mark registrations is only one step in protecting your business and its brands. There is a duty on trade mark owners to look after their registrations or potentially risk the ability to rely on them when it matters most. This article explores some of the considerations trade mark owners should be aware of, in particular when they have discovered third party infringing use.
There are many functions of a trade mark, but its main purpose is to indicate trade origin of one company’s goods and services and distinguish them from those of others, enabling consumers to repeat or to avoid a purchasing decision in the future should they wish. Trade marks are important assets for any business not just because they speak to customers about the commercial origin of goods/services, but because they encapsulate so much more than that, for example, quality, reputation, goodwill etc. Owning a trade mark registration provides the owner with a tangible asset, adds value to a business, puts third parties on notice of trade mark rights and generally makes it easier to take action against third parties for infringement. Obtaining registered trade mark protection, however, is not the end of the story and proprietors should be aware that they need to do more than just pay renewal fees if they want to maintain their rights and their ability to take action against potential infringers. There are a number of steps proprietors can take to strengthen their position. For example, and to name but a few:
- Having appropriate market and register watches in place to alert them to potentially conflicting marks.
- Tackling potentially conflicting trade mark applications and use, thereby maintaining the integrity of their brand.
- Using the mark as registered or in a way that does not alter the distinctive character of the registered mark to reduce the risk of the registration being cancelled on grounds of non-use (and potentially the ability to rely on the registered mark in actions against third parties).
- Using the mark as an adjective to reduce the risk of the mark becoming generic.
- Using the TM or ® symbols to elevate a mark’s status and to act as a deterrent to third parties.
When trade mark owners spot a potential infringement in the marketplace, they should take steps to tackle that infringement swiftly. Failure to do so could result in adverse consequences if the infringing mark is itself registered. Where a trade mark owner has acquiesced for a continuous period of five years with the use of another registered trade mark in the UK, being aware of that use, they will be prohibited from:
- Applying to invalidate the later filed registration; and
- Objecting to the use of that mark in relation to the goods and services in which it has been used.
Such a prohibition does not apply, however, where the later mark was applied for in bad faith.
The good news for trade mark owners is that ‘awareness’ of the allegedly infringing use is generally thought to be actual knowledge, as opposed to implied knowledge. So, for example, photos showing the parties exhibiting their products under the marks concerned alongside each other at the same trade show, rather than circumstantial evidence suggesting that the proprietor must have known about the infringing use (e.g. because both parties operate in the same space or have mutual customers). With this in mind, some owners might be forgiven for thinking that it would be best not to go looking for infringing use in the market so as to avoid becoming aware and potentially triggering the acquiescence provisions. This, however, is not recommended for several reasons, not least because the use concerned could lead to confusion in the marketplace, loss of sales, loss of public confidence in the brand etc.
Is there anything a proprietor can do to interrupt the five year period of acquiescence? Potentially, yes, although the burden is high. According to EU case law, trade mark owners must take the necessary steps to obtain a ‘legally binding solution’ in relation to the infringing use in order to ‘unequivocally express its wish to oppose the use of the later mark and to remedy the alleged infringement of its rights’. Firing off a warning letter and attempting to negotiate a settlement or only opposing an infringer’s existing or subsequent application/registration (whether in the UK or elsewhere) will not be enough. Trade Mark owners must be diligent, vigilant and active in taking measures to look after their registrations by continuing to maintain the origin function of their marks, particularly where a problem has been discovered.
Notwithstanding the wording of the acquiescence provisions, there need only be ‘continued, but not necessarily continuous use of the later mark’ during the five year period. Whether there has been continued use will, as usual, depend on the facts of the case and the nature of the goods and services concerned. In addition, and for the acquiescence provisions to bite, a proprietor must also show ‘continued awareness’ of the allegedly infringing use. This does not mean that proprietors can bury their heads in the sand; they must remain vigilant and actively keep a close eye on the activities of the alleged infringer. It is only then that if a proprietor ‘genuinely and reasonably believes’ that the infringing use has stopped for a ‘significant period of time’ can they be said not to be acquiescing.
At present, rightly or wrongly, there is a high burden on proprietors to be quick off the blocks in tackling third party infringements of their registrations. Whilst it is generally best practice to attempt to settle matters through negotiation in the first instance, proprietors need to be aware that the acquiescence clock will be ticking and that an action for infringement (or other such legally binding measure) must be initiated before the five year period expires. The consequences of acquiescence being established can be a heavy blow to any brand, particularly where the infringing use relates to a competing product and sales performance has been affected. Whilst acquiescence in one case will not prevent a trade mark owner from tackling subsequent infringement relating to another party, serious and irreparable damage may already have been done to the brand by then.
The law on acquiescence is complex and evolving and this article only touches on a few aspects. If you would like advice in this area, please get in touch.