Trade mark infringement – what to look out for

29th February 2016 | Written by Tariq Sayfoo

If you are a business owner and concerned that someone else is using your brand then you need to be aware of your rights and what courses of action are open to you.

A recent Court of Appeal decision highlights the impact of trademark infringement, with popular TV series, Glee, now facing the possibility of having to rename because an existing business owns a registered trade mark for a logo which contains the words, ‘the glee CLUB’.

Comic Enterprises Limited (CEL), who have been running various entertainment venues in the UK for the last 15 years, is the registered owner of two trade marks for logos containing the words ‘the glee CLUB’ which are used on various signage for its venues and in promotional material.

In 2009 the musical comedy TV series, Glee, was launched in the US and UK and has gone on to be a huge success. However, the director of CEL has argued that the presence of “glee” was damaging his business and compromising his brand.

In 2011 proceedings were issued against Twentieth Century Fox Film Corporation (the film studio responsible for the TV show) for trade mark infringement and passing off. The High Court decided that Fox’s activities amounted to trade mark infringement, and this was upheld by the Court of Appeal.

This case highlights the point that services offered under two similar trade marks do not need to be identical for there to be an infringement, particularly if the general public are confused into believing that the two are connected somehow.

Do you own a business? Keep the following in mind:

  1. If your brand is not registered as a trade mark then you should consider this carefully. You never know when a competing or similar brand may spring up.
  2. Don’t let trade mark infringement damage your business and its ability to trade effectively.
  3. Trade marks do not need to be identical for there to be infringement.
  4. Be aware of the potential impact on your operations if similar branding is used by other organisations, even if the organisation in question trades in something very different.
  5. If you think your customers may be confused by a similar trade mark or think the two are associated, then there may be a case of infringement.
  6. Start to gather evidence from your customer base to highlight any detrimental impact of a similar trade mark.
  7. In cases of infringement, it is possible to force others to stop using their name or trade marks.

Contact us of you have a trade mark query

For more information about your business’ intellectual property rights including trade marks and passing off, please contact Tariq Sayfoo, a Solicitor in our Corporate and Commercial team in our Brighton & Hove office on 01273 766917 or via e-mail tariqsayfoo@rixandkay.co.uk.