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Trade mark infringement on the rise – how to avoid accidental infringement and prevent misuse of your brands


A new research report commissioned by Compumark, a division of Clarivate Analytics, has shed light on the increasing number of trade mark infringement cases. 

The report shows that an increasing number of businesses suffered trade mark infringement of some kind during 2018. One third of respondents shared the view that infringement cases had risen from 2017.

In the UK specifically, 90 percent of brands that took part in the survey said that they had experienced trade mark infringement at some point in 2018.

Why is trade mark infringement rising?

The reason for such a rise in trade mark infringement is not down to a single issue. However, despite what the headline cases may lead you to believe, the figures provided by the Compumark report suggest that infringement is not usually caused by unscrupulous companies trying to ride on the crest of their competitor’s success. Instead, the data suggests that a lot of cases are actually a result of the increasing number of trade marks being registered and the fact that businesses often fail to carry out the requisite clearance searches and checks before launching a new brand or applying to register that new brand as a trade mark.

The World Intellectual Property Organization (WIPO) has reported that trade mark application filings continue to rise. 2017 saw a 30 percent rise in applications compared to 2016 – which means that approximately 9.11 million applications were filed in 2017 alone!

With 75.6 million active trade marks worldwide (as reported by SAEGIS® on SERION®), and the number of applications to register new marks continuing to rise, the need for businesses to carry out effective due diligence before launching a new brand or applying to register a trade mark has grown even more important.

Of course, with an ever higher number of trade marks registered, the possibility of accidentally infringing an existing mark will also increase.

Repercussions of trade mark infringement

The impact that trade mark infringement may have on a business, or a brand, can manifest in many different ways, both for the trade mark owner and also for the alleged infringer. Infringement, or alleged infringement, may mean that a business has to pay for the costs of legal action to defend the right to use a trade mark, or to prevent a competitor from using a mark it has previously registered.

If the right to use a brand is lost, the money and time spent on brand development and marketing have been wasted. Perhaps even more important is the resulting negative public image such cases and re-branding can create. 

This is not just a theoretical possibility. Thirty percent of respondents to the Compumark survey were actually forced to change a name because of infringement.

How can businesses reduce the likelihood of trade mark infringement?

In short, through taking advice, carrying out clearance searches and monitoring the trade mark registers and brands used in the relevant industries.

To reduce the chance of inadvertently infringing an existing trade mark, businesses should take advice from trade mark specialists.

Trade mark specialists, such as IP lawyers, can search the trade mark registers and advise as to whether a new brand is likely to infringe an existing trade mark, due to the proposed brand being the same or too similar to an existing mark. If there are similarities, the specialist can advise on what changes could be made to the new brand to ensure that it will not infringe the existing mark. These clearance searches should be carried out well in advance of the launch of a new brand. Should the clearance searches show that there are problematic trade mark registrations which could be infringed by the use of the proposed new brand, the new brand owner will need time, either to choose and clear a new brand or, possibly, to liaise with the existing trade owners to try find a way in which the existing trade mark registrations and the new brand can work in harmony.

Similarly, when managing its own trade mark portfolio, business should seek the service of trade mark specialists to monitor new trade mark applications and bring any possible marks of concern to the business’ attention. The business can then decide whether to take early action to prevent the registration of the mark of concern, and whether to take further steps to prevent the new brand from being launched at all.

The technology and expertise are available for businesses to establish practices and brand portfolios that can avoid inadvertent infringement of existing trade marks and prevent infringement of its own marks by competitors or inadvertently by other businesses. For many businesses, the time is right to put in place such a comprehensive trade mark practice and portfolio, rather than risk incurring the costs and damage of an infringement case.

If you have an existing trade mark that you believe another company may be using, or you are interested in registering a new trade mark and want to ensure that it won’t infringe someone else’s mark, please do not hesitate to contact Esther Kirwan at Clarion.

Disclaimer: Anything posted on this blog is for general information only and is not intended to provide legal advice on any general or specific matter. Please refer to our terms and conditions for further information. Please contact the author of the blog if you would like to discuss the issues raised.