‘Help! I need a lawyer!’ As an entrepreneur, that is often the first thing you think of when there’s trademark infringement. Someone else is using your trademark – without your permission – or has registered a trademark that looks a lot like it. It can also be the other way around: you hear that you are the one infringing on a trademark.
- If another trademark makes you think ‘Hey, that looks like my trademark!’, it’s possible there's a case of trademark infringement.
- It can also be the other way around: your trademark may look (too much) like another trademark.
- The good news is that you don’t need to start expensive and complicated legal proceedings.
- Our advice is to not make it too legal from the start and try to reach a mutual understanding. It will make things a lot easier and save you money.
A bag is not a refrigerator
Trademark infringement is all about the term ‘similar trademark’. It can be a name that very closely resembles your name, for example, or the lay-out of a logo and the way colour is used. What is important is whether the other trademark can cause confusion among consumers. Does your brand name for a line of bags also figure on a refrigerator? If it does, in that case, you’re not in each other’s way.
Better a quick call than an angry letter
Whether it's you who wants to talk to someone else about trademark infringement or it’s you being spoken to, an angry letter is usually not the best opening line or way to react. It’s better to contact the other party first and explain how things are. You may well believe that someone is infringing on your trademark, but it is possible that the other entrepreneur is completely in the dark about it. Or perhaps it is the other way around: perhaps you are not infringing at all because you registered your trademark for completely different products or services. In short, don't make it too legal from the start, and explain.
Check the BOIP Trademarks Register together
Explain to your interlocutor that you both thought of the same name and inform them for which products or services you registered that name as a trademark. Invite them to look at your registration in the BOIP Trademarks Register and tell them what your rights are. If the other party is in fact infringing, be friendly and ask them to change the name. If there is no risk of confusion with the name or logo because it concerns completely different products or services, then the matter is solved.
Get legal advice
Is it the case that someone is infringing and really doesn’t want to cooperate in finding a solution? Then you should consider taking legal advice – in the background. A trademark lawyer can assist you with mediation or in compiling a letter, in which you notify the other party of the infringement. If that doesn’t resolve the situation, you can start proceedings for a preliminary injunction.
Preliminary injunction for a quick decision
If you threaten court action with a preliminary injunction, then you must also be prepared to take that step, and quickly too. You have to have an urgent need if you want to bring preliminary relief proceedings. Bear in mind that such proceedings cost money. If you win, the other party has to pay a large proportion of all the court costs. There is a risk, however, that the other party cannot pay those costs at all and goes bankrupt.
Do you need a trademark lawyer? You can find specialist advisers on the website of the Benelux Association for Trademark and Design Law.