The world of trademarking can be tricky and there is nothing worse than spending your time and money building a brand to find someone else piggybacking off your success with similar or identical branding. Here are 3 simple ways to tell if someone is infringing on your trademark.
As we discussed in our Intellectual Property Right Basics blog, a trademark is a sign (meaning a word, symbol, design or phrase) that distinguishes and identifies a specific source of goods from one party to another. This could be your company name, logo or slogan for example.
You must apply and pay for a trademark, so if you are questioning whether you have one then chances are you don't. It is a process you would remember. Alternatively, you can check here. If you do have a trademark and you stumble across someone who is similar, then it can become a tricky matter. But before you go filling lawsuits and firing off cease and desist letters, take a minute and do your research as you don't always have a case. This also applies if you are on the receiving end of a trademark infringement, to help you understand if you are in fact infringing or not.
Here are three things you need to look into before you consider what action to take:
Firstly, similarity. If someone is using word for word the same name as your trademark, then yes this is a problem. The same for a logo or icon, if it is identical then it is a problem and you need to look at points 2 and 3.
However, if it is just similar, then it gets a bit more complex. If we consider a logo or an icon, we don't mean just changing the colour, that is still the same design... What we mean is if the design itself is different but essentially depicts the same image, then we look at percentage of similarity. There is no specific percentage and ultimately it is subjective to each persons' interpretation, but as a rule of thumb, if it is visually 30% or more similar to a design, it is considered infringement.*
If we take my logo for example, if I were to find someone using this as their logo, it
would absolutely infringe on my trademark. The colour aside, it depicts a similar composition of the 'HA'. Whilst the font and the position for 'design' are different, it is not different enough and it is clear that it is similar to my logo.
If the layout and the 'HA' were significantly different, then it would not infringe on my trademark.
In relation to name or slogan, if they are similar then you are looking at an example such as 'HA Designs' or 'HAD Design'. This is similar and could potentially cause confusion. If it were something such as 'ABC Design' that would be too different.
After deciding on the similarity, I would move on to points 2 and 3 before deciding my next steps.
So we have determined yes, we think the design, name or slogan is too similar or identical. The next thing to look at is the location for the company. This might involve a little bit of investigation.
As trademarks are based on locality, if the company is based in a different country and you don't have a registered trademark there, there isn't anything you can do. If they don't have a trademark, you could go through the application process there, but it is a lengthy and costly process anywhere and laws vary per country. It is up to you to weigh the pros and cons at that point. I would consider if you sell to that country or intend to, if the answer is no, then it may not be in your best interest to fight it, it would cause more stress than it's worth, however, I would also consider point 3 before making any final decisions.
If, on the other hand, they are based in the same country then I would move to point 3.
What are they selling? Do they sell similar goods and services to the same industry as you, or not? If the answer is no, then it is unlikely it would go in your favour if you took it further.
If they are selling similar goods and services within the same industry, then yes this would infringe on your trademark. The foundation of a trademark is if it will confuse the public, or cause a loss of effectiveness or harm to your business. If you sell to a different industry, then the chances are your customer bases are unlikely to cross and confusion will be limited. You aren't likely to lose sales as a result. If they are in the same industry, then it could cause confusion resulting in a loss of sales and ultimately hindering your business. You might even have evidence that this has already confused people. But, this is why you have taken the time to invest in protecting your assets with a trademark, to prevent negative harm to your business.
You must also consider the classes your trademark covers. If your trademark doesn't cover those services or goods, you are not protected, regardless of whether you sell them. If this is the case, then you could look to apply for a trademark in those classes and wait to see if you receive the trademark before taking further action.
So, if after completing all three points you decide yes they are infringing on your trademark, then you can look at potential next steps. That isn't to say you jump straight into court, there are steps you can take first. We aren't saying that if you tick all three points off this means you will win a case either, as courts take other factors into account, trademark law is a very complex thing. If you are in doubt you should always seek legal advice from a qualified professional. In the UK, most lawyers offer a 30-minute free consultation where they will give you advice as to whether you have a case or not.
I would also like to mention, when it is your business, you are heavily invested, financially and emotionally, which can have an effect on how we interpret the situation. You may feel slighted that someone has a similar design to you and jump to 'they have clearly copied me', but that is not something you know or can always prove. It can be easy to go pointing fingers and wanting to make them stop immediately, that isn't always a good solution. We need to remain objective and push our feelings and opinions aside, take some time and make an informed decision before taking action.
*Disclaimer: we are not lawyers or qualified in law. You should always seek legal advice from a qualified professional. Using these three steps does not guarantee you would win a trademark infringement case, this is a basic, educational guide to the complexities of trademarks, there are other laws and considerations involved in a trademark infringement case. See https://www.gov.uk/topic/intellectual-property/trade-marks for more information.