What to do if someone hijacks your company's trade mark

Cripps Pemberton Greenish partner Kathryn Rogers explores the options in trade mark disputes following from the BT-Technology Will Save Us trade mark spat

The digital revolution means that new tech companies, and new initiatives by established names, are popping up every day. So it's little wonder that trade mark disputes are spiking.

Innovation and origination is intense in fast-moving markets and businesses need to defend their position when they are first with an idea - and stop others swooping in to take credit.

London tech company Technology Will Save Us's recent spat with BT is a classic example. The technology education company squared up to the telecoms giant when it used a "technology will save us" slogan as part of its Beyond Limits advertising campaign. They took an interesting approach that all small businesses could learn from, which we will look at later. First, let's recap on the basics of protecting what's yours.

Under UK law there is a separate offence of ‘unjustified threats' in the field of trade mark infringements

First, if you believe your trade mark is being infringed you will need proof. You will need to show that the alleged infringer is either:

However, except in the case of a household-name brand, if the sign/slogan is being used for services that are quite different and distinct from one another, you won't be able to claim infringement because the copycat trade mark won't be causing confusion. For example, the use of ‘Whirlz' for a launderette would not infringe an existing trade mark in the same name for an ice cream shop.

It works the same way if the name is similar but not identical, and the product or services are not identical. For example, if your trade mark is ‘Katz', the use of ‘Catts‘ or ‘Catz' would not be an infringement unless the services/products provided were identical or similar enough to create a risk of confusion among potential customers.

It's surprising how many infringement cases fail simply because critical evidence was not captured at the outset

Also you cannot trade mark a word used in its ‘normal' sense. So for example, Microsoft Windows could not successfully claim infringement if a cleaning business uses the slogan ‘Cleaning windows since 1980'.

Of course, evidence will be key to proving infringement, so it is essential to start gathering and preserving samples, photos, screenshots, marketing literature and so on at the earliest stages, even before you involve lawyers, together with times and dates to show the duration of the infringement. This may seem an obvious point, but it's surprising how many infringement cases fail simply because critical evidence was not captured at the outset.

Evidence is also crucial for showing that a claim is not spurious. Under UK law there is a separate offence of ‘unjustified threats' in the field of trade mark infringements, which means extreme care is required before sending cease and desist letters. This is a tricky area and the involvement of specialist IP legal advisers is strongly recommended to avoid falling foul of these laws.

They are designed to protect innocent (often smaller) businesses that could otherwise live in fear of accusations of infringement by larger companies with deeper pockets, and having to spend tens or hundreds of thousands of pounds to defend themselves even when they've done nothing wrong.

Microsoft Windows could not successfully claim infringement if a cleaning business uses the slogan ‘Cleaning windows since 1980'

An interesting development in the spat between BT and Technology Will Save Us is the smaller company's decision not to take formal legal action against the telecoms giant, but instead to seek to work together with them.

Collaboration can sometimes be a neat solution. Sometimes trade mark infringement is entirely accidental. It's quite possible for a business to develop an infringing trade mark without realising, simply because their checks have not been thorough enough - or because although they're aware of the pre-existing similar Mark, they assume they're free to use it because their business is so different. Or they have been stumped as to who to contact to ask formally for permission.

In these situations, a conversation may be all that's needed to find an alternative route to litigation, for example, by negotiating a licence agreement for the use of the trade mark, or some other commercial arrangement that might be beneficial to both parties - and avoid costly and time-consuming litigation.

There's a PR and reputational aspect to this too, which is where Technology Will Save Us were quite savvy in their dealings with BT - not only from the point of view that a household brand name probably doesn't want the public to see it take aggressive action against a much smaller company, but also from the perspective of a smaller, unknown business suddenly finding itself in the spotlight and working that to its advantage to raise awareness of its own brand.

A firm stance is often sensible in protecting the integrity of your brand. But a ‘one-size-fits-all' solution is not necessarily the best. It's a judgement call: is an informal conciliatory approach better than a formal threat of legal action? Or is there something in between that would be better?

Litigation can be complex, time-consuming and costly. But failing to act forcefully enough at the outset and nip an issue in the bud can sometimes only serve to prolong the pain and increase the expense. The best advice is to seek advice form IP law experts, and as early as possible. Then you will be in a good position to work out what the best approach in your particular circumstances might be.

Kathryn Rogers is a partner at law firm Cripps Pemberton Greenish, focusing on technology and IP related matters