What are trademark infringements?
The infringement of a trademark is an unauthorised use of a registered trademark by any third party on any goods or services identical with the goods or services specified on the register. According to general trademark laws, a registered trademark is infringed when the infringer, without obtaining consent from the registered trademark holder, uses an identical logo or a name, for its goods or services despite the possibility of confusion by the average consumer.
If the trademark owner is able to prove infringement, company accused of trademark infringement is likely to receive any of the following:
a court order to stop using the accused trademark;
an order requiring the destruction or confiscation of products including the accused trademark;
an order for monetary relief, including defendant's profits, any damages sustained by the trademark owner, and the costs of the action;
an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.
Examples of trademark infringements
Examples of trademark infringement include instances in which one company sues because it contends that another company is profiting from its trademark without approval. Infringement cases can occur between big and small companies, but the company size rarely influences the outcome of such disputes.
Clothing Brand called Bentley approached Bentley Motors in 1998 about the branding clash and then followed with court actions due to the 'persistent infringing' of their trademark. The court upheld the claim of the smaller company that registered its trademark first, which meant Bentley Motors was no longer able to use the name, either on its own or in combination with its famous "wings" logo in connection to their clothing line. It was also ordered to destroy all of its branded apparel that included the word 'Bentley'. Read more.
Austria soft drink company Red Bull issued a cease-and-desist letter to a small English gin business, Bullards, in 2021, claiming that they were infringing on their trademark by selling similar products with the word "bull" in their name. Red Bull stated that it was willing to resolve the dispute if the gin firm removed a series of goods and services – including energy drinks, non-alcoholic beverages, and events – from its trademark application and registration. Removing these products meant lost profit to the owners on top of the legal fees they had to pay for the court procedures. Read more.
How to get around trademark infringements?
Trademark infringement settlement procedures can be very expensive and require a lot of time and effort to go through for a brand, no matter if they are the ones who raised the infringement or are the ones being accused of it. That’s why it’s extremely important for brands to take appropriate preventative measures to ensure they won’t have to deal with infringement going further with their business. To ensure that they aren’t infringing on an existing brand, as well as protect their unique trademarks, companies should make sure that they include the following steps in their trademark registration process:
Make sure the trademark is distinct enough
When choosing a name for your company, you should try to avoid words that are too generic, descriptive, or confusingly similar to existing trademarks. Read more about trademark distinctiveness.
Conduct a prior search for conflicting trademarks
As thousands of new trademarks are registered daily, it is generally recommended to search IPO filing databases before starting with the registration to ensure that there are no similar trademarks in your business field. Read more about similarity search among existing trademarks.
Choose the correct trademark classes
When filing a trademark application, you must indicate the classes of goods and services which will be associated with and protected by the trademark. The registered trademark will protect the brand only in the selected classes. Keep in mind potential business expansion beyond your current offerings to make sure your business is well-protected. Read more about understanding goods & services selection.