Trade marks and 'threatening' letters
Introduction
Upon discovering the use of their trade mark (or a confusingly similar trade mark) by an unlicensed third party, the immediate reaction of many registered trade mark owners is to telephone or write to the third party, threatening proceedings for registered trade mark infringement unless they cease using the trade mark.The danger in doing so, is that they may leave themselves open to being sued for making an 'unjustified threat'.
The Trade Marks Act 1994
Section 21 of the Trade Marks Act 1994 (together with section 6 (1) of The Community Trade Mark Regulations 2006) provides that where a person threatens another with proceedings for infringement of a registered UK or Community trade mark, any person aggrieved may bring legal proceedings against that person for a declaration that the threats were unjustifiable, an injunction against the continuance of the threats and damages in respect of any losses sustained by the threats.
The person aggrieved will be entitled to these remedies, unless either the trade mark owner shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned, or the acts of which complaint is made by the trade mark owner fall within certain specific and limited categories as set out in section 21 - which, unfortunately, do not include complaining about the sale of goods bearing a trade mark by an unlicensed third party.
Whether or not a letter, statement or other document constitutes a 'threat of proceedings' is to be judged by placing the words used in their context. The meaning of what is said is to be decided in accordance with how those words would be understood by an ordinary reader, with the initial impression that such words would have on a reasonable addressee being particularly important.
Thus, it is important that before the owner of a registered trade mark writes and sends a letter to a third party, raising the possibility of trade mark infringement proceedings being brought against them, the owner takes care to consider whether they have a case and as to how they express themselves in the letter. It would be sensible to ask a solicitor who specialises in trade mark law to check the legality of the letter before it is sent.
As Carl Steele, a senior associate in the IP team at Ashfords, explains:
"No-one wants to be the subject of unexpected and unwanted legal proceedings - and yet many owners of UK and Community registered trade marks leave themselves open to this risk by not taking legal advice before sending off letters to third parties who are using their trade mark, or something similar, without their permission.
The best and safest course of action is to say and do nothing until after legal advice has been sought from a person who specialises in trade mark law."
If you need assistance with any trade mark, other intellectual property or commercial contract issues then please contact , Head of Intellectual Property, on 01392 33 3951.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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