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Enforcement: trademark protection and infringement actions

The registration of a trademark right is only the first step in a longer process of protection and enforcement. For some trademarks, this process will be relatively simple and straightforward but, for many trademark owners, it will be a complex journey, as they seek to distinguish and uphold their rights against counterfeiting, passing off or  infringement by third parties.

This is a basic introduction to trademarks and the trademark enforcement process. For details on Novagraaf’s specific trademark services, including searching, watching, trademark registration and international filing, click here for our services overview page. To contact one of our attorneys or to review their expertise in your sector, click here.

Identifying infringement: third-party use and passing off

A trademark gives its owner the right to exclude others from using the registered mark in the relevant territory and group of classes. As such, the emphasis is on the trademark owner to monitor for misuse and to enforce the right via infringement action where misuse is found.

Novagraaf’s trademark watching service alerts trademark owners to the unauthorised use or misuse of brand names, logos and trade names, including passing off (a UK action). Our team of experts also work with companies to develop a strategy to act against trademark infringement, ensuring that any action taken is both cost-effective and proportionate to the threat. Speak to one of our trademark attorneys for advice on prevention and monitoring tools.

Responding to trademark infringement and litigious actions

Trademark owners don’t just need to monitor and act against infringing actions by third parties; they may also find that trademark infringement and passing off actions are brought against them too. This could be for a number of reasons; for example, they didn't undertake a thorough trademark search before registering the mark or they have recently extended their use of the trade name into a new market or product area, in which a conflicting trademark registration already exists.

Due to similarities in the brand names chosen for trademark applications, conflicts between trademark owners and applicants are becoming increasingly common. Unless you have conducted a thorough trademark search before using or seeking to register a new mark in your chosen territory or class, there is a possibility that your chosen mark will be similar or confusingly similar to a mark that has already been registered.

Whatever the cause, Novagraaf can work with you to examine the validity of your trademarks, assess the trademark infringement or passing off claim in light of that examination, and provide advice and assistance on possible defence, settlement or negotiation strategies.

What is a trademark: further information

You can find out more about trademarks and the processes for obtaining, enforcing and exploiting trademark rights, here. For information on Novagraaf’s trademark services, including searching, watching, trademark registration and international filing, click here for our services overview page. Alternatively, contact our customer support team, using the contact form at the top right of this page.