How Do You Avoid Accidentally Infringing on a Trademark?

Trademark infringement occurs when one party uses another's trademark in a way that is likely to cause confusion, deception, or mistake about the origin of goods or services. Establishing an infringement claim involves proving ownership of a valid trademark and priority rights. The likelihood of confusion hinges on factors such as appearance, phonetic sound, word placement, connotation, and commercial impression.

Trademark infringement can take various forms. For example, in the clash between Elvis Presley's estate and BrewDog, the Scottish brewery faced a challenge over its "Elvis Juice IPA" beer brand. To get around this dispute, BrewDog's founders changed their names to Elvis, and said that the beer was named after them, which caused quite a publicity stir. 

Another instance involved the prolonged battle between Apple Corps, the Beatles' holding company, and Apple Computer (now Apple Inc). A settlement in 1981 prohibited Apple Computer from entering the music industry, but conflicts resurfaced with the introduction of iTunes in 2003. 

The Instagram-LitterGram case demonstrates a clash between a small app and the social media giant, with Instagram pressuring LitterGram to alter its name to avoid brand dilution. Starbucks, renowned for defending its brand, engaged in a legal argument with a coffee shop called "Sambucks" in Oregon. The court ruled in favour of Starbucks, ordering the removal of "Buck" from all aspects of the small coffee shop. These cases highlight the importance of strategic brand creation to navigate potential trademark challenges.

Avoiding Trademark Infringement Issues

As a business owner, it is in your best interests to ensure that your trademarks aren’t being accidentally infringed by other parties. The first step is therefore to register your logo, business name, product or brand in order to legally protect your trademark.

By registering, you gain legal protection, enabling you to take action against unauthorised use and counterfeiters. The inclusion of the ® symbol signals your brand's exclusivity and serves as a deterrent. 

Before initiating the registration process, it's crucial to ensure that trademark protection aligns with your intellectual property goals. Keep in mind that a registered trademark lasts for 10 years in the UK, requiring renewal for continuity. 

Understanding what can and cannot be registered is vital. Trademarks can include words, sounds, logos, colours, or combinations, but restrictions exist for offensive content, descriptive terms, misleading information, common phrases, generic shapes, and unauthorised use of national flags or official emblems. A thorough check for similar trademarks further ensures the uniqueness and effectiveness of your registered trademark, ultimately securing your brand identity for long-term success in the competitive market.

To avoid missing potential trademark problems, businesses can use a trademark-watching service. Alternatively, you can sign up for the UK government “track a trademark service.” This type of service keeps an eye on trademark registers and quickly alerts you about similar marks. 

If you are starting a new business or brand, it is a good idea to check whether a specific trademark is already registered. You can do this by checking the trademark register and doing a search by name, owner, keyword or phrase.

If you think that someone has infringed your trademark or you are concerned about accidentally infringing someone else’s trademark, it is a good idea to seek legal advice.

What Can a Trademark Lawyer Do?

A trademark lawyer essentially safeguards your invaluable intellectual property. Beyond the routine tasks of filing trademark applications, addressing opposition claims, and handling infringement litigation, these professionals play a pivotal role as specialised advisors and strategic problem-solvers for your business. Their expertise goes beyond the legalities, extending to guiding you in maximising the commercial value derived from the intellectual property assets under your ownership.

Trademark lawyers often initiate contact with the infringer through letters and calls, persuading them to comply with reasonable requests to cease and desist. Swift resolution is ideal for minimising damage. The decision to press for repayment of costs and damages is weighed carefully. If harm is stopped early, moving on might be the best course. However, in some cases, significant payments are pursued after assessing the infringer's resources and enforceability within a jurisdiction.

How Can Gerrish Legal Help?

Gerrish Legal is a dynamic digital law firm. We pride ourselves on giving high-quality and expert legal advice to our valued clients. We specialise in many aspects of digital law such as GDPR, data privacy, digital and technology law, commercial law, and intellectual property. 

We give companies the support they need to successfully and confidently run their businesses whilst complying with legal regulations without the burdens of keeping up with ever-changing digital requirements. 

We are here to help you, get in contact with us today for more information.