My trademark has been used without my permission. What do I do?
A trademark is a sign that businesses use to distinguish their goods and services from those of other businesses. However, other businesses may use similar signs for related goods and services, thereby confusing the public. They may be doing it deliberately, or because they do not know better. What can business owners do in such a case? This article will explore the possible ways of dealing with such situations.
Gathering of evidence of trademark infringement
A trademark owner should gather evidence against the businesses that use similar trademarks, for example on products or training materials. Alternatively, the trademark owner could get a private investigator to gather such evidence.
Letter of cease and desist or letter of demand
Depending on the legal strategy, the trademark owner can issue a letter of cease and desist to the other businesses that have infringed on the trademark. The letter can be seen as the first step in asking an individual or a business to stop an illegal activity by threatening legal action.
The letter can also demand compensation for any losses suffered by the trademark owner due to the trademark infringement.
Has the trademark been registered?
Strictly speaking, since a trademark just refers to a sign that a company is using, it is not necessarily registered. That said, in everyday language, a “trade mark” has come to refer to a registered trademark.
Trademark registration awards the owners with an exclusive right to use the mark for a certain category of goods and services and makes it easier for a business owner to take action against competitors that attempt to use the same mark.
Unregistered trade marks
When competitors infringe an unregistered trademark, business owners are limited to the common law rights of “passing off.”
To utilise the right of “passing off”, one must prove:
- Goodwill or reputation attached to the goods and services that is supplied,
- A misrepresentation made by the defendant to the public and;
Damage or damage the business owner is likely to suffer.
These rather tedious requirements are referred to as the “classical trinity”, and has been approved and also endorsed by The Singapore Court of Appeal.
Upon satisfying the requirements and attaining a civil suit in the trade mark owner’s favour, an injunction may be granted, damages or statutory damages may be paid to the owner or an account of profits may be given to the owner of the trade mark.
While owners of registered trademarks can rely on the common law right as seen above, they are also granted additional protection. The Trade Marks Act provides protection for those who have registered their trademark. While it may not be necessary to register a trademark in Singapore, a registered trademark is an exclusive right that shows proof of the true owner and the owner gains a statutory monopoly of the trademark.
Section 27 of the Trade Marks Act prohibits the use of a sign that conflicts with the registered trademark. Unlike the common law right of “passing off”, there is no requirement to prove that use of the sign caused damage to the registered trademark owner.
A registered trademark used without the owner’s permission can be seen as a criminal offence. It is advised that a police report should be made in accordance to the violation, along with the supporting evidence. Then the police should acquire a warrant that enables them to seize the illegal goods at the offender’s premises and finally proceed to press charges proper.
As for criminal sanctions, the maximum sanction would be a fine not exceeding $100,000 or imprisonment not exceeding 5 years or both, in addition to the possibility of forfeiture of the counterfeit goods. Thus it can be seen that the law takes a harsh stand against traders who deal in counterfeit and pirated goods.
It is strongly advised that owners of trademarks have their marks registered so that they are well-protected.
The process of filing a complaint against the offender or suing the offender may be one that is a long and tedious process for those who are not aware of their rights as a trade mark owner. Thus, it is advisable for one to seek legal advice. Compare quotations and get legal advice from trademark infringement lawyers.
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- Defences to Trade Mark Infringement in Singapore
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- What are the criminal offences relating to trade marks?
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