A registered trade mark provides strong rights to prevent others using an identical or confusingly similar trade mark, in relation to goods or services that are the same or similar to those covered by the registration.
However, the onus is on the trade mark owner to enforce those rights when alerted to any potentially infringing activity.
A lack of diligence in enforcing a registered trade mark can result in brand dilution and greater difficulty in enforcing trade mark rights in future.
The first step in enforcing a registered trade mark (or a trade mark that is soon to be registered) is normally to send a letter of demand to the alleged infringer.
A letter of demand is intended to:
- Explain the trade mark owner’s rights (e.g. registered trade mark)
- Identify any instances of infringement of those rights
- Request that remedial action be taken
- State the possible consequences of non-compliance (i.e. litigation).
If the other party feels that an allegation of trade mark infringement is unjustified, they can take action against the trade mark owner for making ‘unjustified threats’.
The purpose of such an action is to obtain a declaration from a court that a threat is unjustified, and to obtain an order prohibiting further threats, and awarding damages that may have been suffered because of the making of a threat.
Actions for unjustified threats are unusual, for several reasons:
- Where the case for trade mark infringement is strong, the trade mark owner can usually prove that the threat was justified; and
- Bringing an action for unjustified threats against a trade mark owner may prompt the trade mark owner to commence trade mark infringement action (which would negate the action for ‘unjustified threats’).
It is not uncommon for a person alleged to have infringed a registered trade mark to threaten to bring an action for unjustified threats, for defensive purposes (i.e. in the hope of scaring a trade mark owner away). It is difficult to tell whether such threats will be carried out.
Nevertheless, before sending a letter of demand, a trade mark owner must be willing to bear the risk of an action for unjustified threats.
Trade mark owners should therefore be willing to follow through their threats of trade mark infringement by commencing litigation, or withdrawing their allegations if necessary.