Trademark infringement is not a rare situation. Most of these cases result from entrepreneurs ignorance. Who one invent the “original name” and promote it without deeper reflection. The fact that the sign is protected by Patent Office a person finds out later with a warning letter from the law firm. If You have such situation, then below you will find some information about what may threaten you.
In order for no one to accuse you of trademark infringement, it is worth carrying out the so-called “registrability research”. I wrote more about this in one my previous post. What is the research about? Before you choose a name, you check whether someone has not already registered it in the Patent Office. That can save you a lot of trouble in the future.
For the trademark infringement the owner can make a:
1 – Claim of default
This claim is defensive in nature. It consists in prohibiting the continued use of someone else’s trademark in violation of the law. In court cases, this is the most frequently raised claim for trademark infringement. And it happens for several reasons.
First of all, it is the easiest to obtain. It is not required to establish fault. It is enough to indicate the probable risk of misleading consumers.
Secondly, it is not required to determine the damage amount. And it means lower court fees than in the case of pecuniary claims.
Thirdly, the positive process outcome determines the issue of further legal steps. If the court finds that the infringement has occurred, you can file a suit for financial claims.
2 – Claim for damages
It can be based on general principles of civil law. Another option is to demand payment of an appropriate remuneration or payment of a sum corresponding to the license fee.
However, any amounts requested should be justified in some way. If someone in the pre-trial letter expects you to pay damages in amount of, eg. 15,000 EUR, then in a possible dispute, they will have to prove why exactly this sum.
If the court decides that the amount requested is excessive – it will lower it.
Proving the amount of damage is often very difficult.
The more that we are talking here about intellectual property or intangible goods. How to credibly assess reputation damage?
Compensation for trademark infringement is easiest obtained by citing the license fee. I wrote the easiest because the courts willingly approve such argumentation. However, it has to be justified. If the owner of protected trademark grants a license for its use (eg. in the form of franchise), they are in a very good position.
Example:
Trademark owner for years has been licensing in amount to 1,000 EUR / month.
Trademark infringement in your case has been going on for 2 years.
There is a chance that the court will agree to compensation in amount to 24,000 EUR.
It is the biggest threat to your interests. You develop your business without worries and suddenly get a warning letter with demands amounted to several dozen thousands EUR. It is also very often the moment when entrepreneurs find out that “names” can be protected in the Patent Office. For many, it is a very expensive lesson.
3 – Claim for unjustified benefits
As in the claim for damages, here are also difficulties in determining the amount of the benefit. Of course, each trademark infringement is different and requires an individual approach. However, it is not easy to prove that a given entity obtained the indicated benefits because it has a trademark similar to someone else’s. It is the reason why unpaid license fee is chosen more willingly.
4 – Preventive claims for trademark infringement
The owner of trademark protective right has for disposal a number of preventive claims. For example, they may demand the cessation of activities that can violate the law. Also at his request, the court may adjudicate on unlawfully made or marked products and materials that were used to make or mark them. Thus, the court may decide to withdraw from the market the goods which break trademark law, as well as to destroy them.
Claims can accumulate!
If you have been accused of trademark infringement, I have bad news. All claims mentioned above can accumulate. From the very beginning, these legal steps are to lead to restoration of the facts from before the infringement. Therefore, it is about achieving the hypothetical state of unimpeded exercise of the law. Under certain circumstances, it may turn out that the entire range of claims must be used to achieve the goal. There can be also additional overlaps with the law on combating unfair competition.
As you can see, the Act on Industrial Property Law provides wide range of legal tools to protect your brand.
Unfortunately, some entrepreneurs learn it from their own autopsy.
In my opinion, legal awareness of copyright is not so bad. However, if we are talking about industrial property, then the situation is not optimistic. It is worth having at least basic knowledge of this matter, because in extreme cases, trademark infringement may be a threat even for the company existence!
I also encourage you to watch this video:
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- Small company and trademark. When to file a trademark application? - 20 March 2018
- Trademark similarity: When does it lead to an infringement of the law? - 15 February 2018
- Rebranding – when it is a threat to your company? How not to lose a trademark? - 8 January 2018
