A recognisable brand identity, a positive reputation and customer goodwill are all valuable assets that can take a long time for a business to build or acquire. Once you’ve done so, these assets can ensure your continued success, but this can also create problems for companies that are not prepared.
Financial rewards, market dominance and a brand that is recognised by customers can all draw imitators, counterfeiters, and competitors to try to capitalise on your success for themselves. For this reason, it’s vital to understand how to protect your brand from trade mark infringement, the strategies you can use to defend your intellectual property (IP) and what to do if you feel that your rights have been infringed - or if you’ve been accused of copying someone else’s IP.
In this guide, JMW’s expert IP law solicitors will explain the different categories of protection for intellectual property, how to register your valuable intangible assets with the Intellectual Property Office (IPO) and what to do if you need to defend brand elements that have not been registered.
Registering Trade Marks, Patents and Copyrights
One of the most important steps a business can take to prevent issues from arising and protect itself is to take a full account of its intangible assets and register them for legal protection wherever applicable.
Intangible assets include any non-physical assets that belong to a business. In intellectual property matters, this usually refers to elements like a logo, a jingle, a colour scheme or other identifiable brand elements that are vital to the relationships most companies have with their customers.
It’s important for businesses to protect these assets wherever possible. If another company infringes upon your rights by copying these elements and you have not registered them with the IPO, your business may suffer financial losses or reputational damage and there may be very few options you can take to legally remedy the situation.
Below, you can find a more detailed explanation of how each type of protection applies to different elements of IP and how to register your intangible assets.
There are many elements that can comprise a registered trade mark, which can include:
For this reason, trade marks are typically used to protect brand elements like logos or slogans. A trade mark must meet several criteria to be eligible for registration - for example, common phrases or misleading product descriptions are ineligible. It’s best to consult with a media lawyer or other intellectual property expert before applying, as each application requires an application fee that cannot be refunded if your application is denied.
More detail on trade marks can be found in our dedicated trade mark guide.
A patent protects an invention or innovation you have developed, or an improvement you have made to an existing product. To register a patent, you must be able to provide a design and explanation of how the invention works, and ideas cannot be registered. This type of legal protection is ideal for companies that have developed new products and want to protect their designs before putting their innovations on the market.
One consideration for businesses is that patents are expensive to procure and enforce. There is also a risk that patent applications will be rejected if they do not fulfil the appropriate criteria for registration. In particular, your invention must be unique; if a similar invention has been sold or patented before and your own design is not significantly different from the earlier product, you won’t be granted a patent for the invention.
For this reason, it’s important to search through existing and pending registrations to ensure that they do not overlap with any new application you want to make for either a patent or a trade mark. Existing applications will be given priority and this is another way in which your patent or trade mark may be unexpectedly rejected. A patent solicitor can help with this process and give your application the best chance of success.
Copyright is used to protect written, musical, or artistic works in a variety of media. This includes drawings and photographs, recordings of sounds, music, film or television, and online content like databases or software.
When a work is created, copyright applies automatically to the author of the work and does not need to be registered. Use of the © symbol on a work does not affect the level of copyright protection you are granted in the UK, but may affect the copyright status of your work in other jurisdictions.
Businesses that produce physical products may feel that copyright protection does not apply to them, but it’s important for companies in any sector to keep in mind. Photographs or written descriptions of your products on your website may be vulnerable to infringement by producers of similar or imitation products.
In many cases, counterfeiters will use authentic images of your products from your website to disguise and sell their counterfeit products. Monitoring where and when your content is copied and used elsewhere online can be a valuable step in tackling counterfeit operations when they arise.
Responding to Infringement
If you feel that a business is using elements of your brand and thereby infringing upon your intellectual property rights, you should contact a legal specialist immediately. These matters can be extremely complicated in terms of the legislation and case law that apply and if you contact the infringing party privately without seeking legal advice, you could harm your case. This could also result in the other party pursuing legal action against you before you are able to launch proceedings against them, which can further complicate a difficult situation.
If you have been accused of infringement, it’s equally important not to contact the other party until you’ve solicited legal advice. Many such accusations are made in bad faith and lack legal grounds, but you should have an expert solicitor advise you on the best course of action based on your desired outcome before you choose or commit to anything.
There are a number of approaches that can be taken in response to an infringement of your copyright, trade mark, or patent rights. These will depend on your desired outcome, the level of protection you have and the nature of an infringement. For example, you may wish to pursue an injunction to immediately respond to and prevent an infringing action while a long-term solution is reached, or to pursue alternative dispute resolution rather than taking another party to court. More information about this can be found below.
It’s advisable to register your intellectual property assets to have the highest chances of success in any legal action that arises. However, even if your assets have not been registered for legal protection, you may still be able to pursue legal action to defend them against infringement.
It is more difficult to achieve success in these cases and it’s best to consult legal advice before pursuing a course of action, to gain a thorough overview of the options that will be available to you and an understanding of the possible outcomes.
If you have intangible assets - such as a logo, a colour scheme or other brand elements - that are not registered with the IPO and a competitor or other business copies them, you may still be able to pursue legal action against them.
This is referred to as “passing off”, based on the idea that another company is intentionally adapting elements of your branding for itself, to try to mislead consumers about their relationship with your business or the origin of their products.
You must be able to prove that the brand elements in question are uniquely or closely associated with your business, that customers have goodwill towards your brand and that the use of these elements by another company is causing damage to your business or its reputation. This is usually more difficult than defending a registered trade mark or another protected asset, but you should contact a solicitor to discuss your specific case if you have concerns about a possible infringement.
Resolving a Dispute
Disputes can arise at many stages of the process and won’t always involve a direct infringement of your intellectual property rights. In fact, dispute resolution is a common response in cases where a third party has objected to an attempt by your business to register a trade mark or patent.
In fact, when you apply to register a trade mark, the Intellectual Property Office may contact the owners of any similar trade marks to allow them a chance to register an objection. This allows businesses to protect their own trade marks, in cases whether they feel that your application infringes upon their existing protected assets. If they choose to do so, you can either withdraw your application or try to defend it based on your view that it is different from the existing trade mark.
In these cases, alternative dispute resolution (ADR) is a cost-effective alternative to court proceedings. It may also be necessary if you are accused of infringement by a business or individual. ADR can include mediation, arbitration, adjudication and conciliation, processes through which parties to the dispute can negotiate to pursue their desired outcome.
If alternative dispute resolution fails to resolve the issue (or is not an appropriate option in your specific case), stronger legal action will be needed to stop the infringement. This will often begin with an injunction to quickly prevent the infringing action until the matter is resolved.
This can prevent financial losses or reputational damage to your company if another business is passing off their product as yours, using assets that infringe upon a trade mark, or developing a product that contravenes the exclusivity of your patent. In cases where you have suffered losses, you may be able to claim financial damages from the infringer to put things right, but it’s important to speak to an expert to set a realistic expectation for the possible outcomes of any legal action.
Even if your intellectual property assets are secured, threats to your business’ reputation can emerge for a number of reasons beyond trade mark infringement and from a variety of sources, not only competitors and third parties.
For example, certain types of intellectual property are more likely to be stolen by someone within the business. A business’ IP can include customer databases or other proprietary information and this type of intangible asset is sometimes at risk of being stolen by employees, either to sell to competitors or to expose the inner workings of your company to the general public.
There are legal actions you can take in response to this, but sometimes damage has already been done to your reputation that can result in financial losses for your business. For this reason, it’s important to consider media management as part of your response.
This is especially important in cases where information about your company is published in a traditional or online media outlet. Information may be sold by a former employee, be obtained by hacking, or originate from another source, and it may not even be true. There may be legal actions you can take to have the article withdrawn if the information is false or was obtained illegally. Otherwise, it’s still important to consider how you want to frame your response.
In these cases, it’s best to hire a law firm that specialises in media law to help you to manage the situation. There are many different approaches to take to deal with a media crisis and these will depend on whether the information about your business was true or false, whether the information being published is in the public interest, and any losses or other challenges your company has faced as a result. For this reason, it’s important to obtain advice that is tailored to your specific situation before you act.
Talk to Us
JMW’s media law team has significant experience in representing clients whose copyright, trade mark or patent rights have been infringed. Our solicitors will work to understand your desired outcomes from any legal action and provide practical advice to help you achieve your aims. We can also provide alternative dispute resolution services or represent clients in court if they have been accused of infringing on someone else’s rights.