Last week we talked about trademark registration. Today, from Martínez-Sanz Lawyers, We will tell you what a trade mark infringement is and how to deal with it.
What exactly is a trademark infringement?
First of all, a trade mark infringement requires that such a «trade mark» exists beforehand. That is, it must be a registered and legally recognised trade mark. Thus, a trade mark infringement is committed when the rights of the proprietor as owner of the trade mark are infringed. By registering a trademark, the owner has the exclusive right to use it. That is, no one other than the owner may use the mark unless it has been licensed to him in return for payment. Thus, registering a trade mark gives you legal certainty and strengthens the status of the proprietor in the event of a dispute.
The owner of a registered trademark can take civil and criminal action against those who commit any trademark infringement.. If a third party uses your trademark, you are committing trademark infringement. The civil and criminal actions available to the owner include the necessary measures to safeguard it and compensation for damages.
How is trade mark infringement determined?
To determine whether there is an infringement of a registered trade mark, it must be observed whether the use of the mark by the infringer causes confusion among consumers.. This will occur when the infringing mark is the same or similar to the registered mark and, in addition, is used to identify goods or services identical or similar to those protected by the registered mark. It is thus clear that not only is literal copying a trade mark infringement, but also that it may also be a criminal offence to copy it slightly, as long as this copying causes confusion among consumers.
What are the legal consequences of trademark infringement for the infringer?
It is the trade mark owner who can bring legal actions that have legal consequences for the infringer. In addition, the licensee may also do so, provided that the owner has allowed him to do so. When bringing an action, the owner must prove the infringement. The legal consequences of trademark infringement for the infringer are as follows:
- Compensation for damages. In the event that someone copies your trademark, you can claim compensation whereby the infringer must compensate you for the losses suffered and the profits lost. The calculation of the compensation is reflected in Article 43 of the Trademark Act. If you want to claim damages, you will not only have to prove the trade mark infringement, but also the damage it has caused you.
- Injunctions. The infringer is prohibited from using the trademark and is obliged to cease any activity that infringes the rights of the trademark owner.
- Prohibition action. By which an act of trademark infringement is prevented before it occurs.
- Removal action. It consists of eliminating the lingering effects of the trade mark infringement, such as the withdrawal of any remaining infringing product from the market.
- Attribution. The aim is, where possible, to attribute to the owner all the property seized as a result of the infringement of the right. The value of these assets shall be set off against the compensation for damages. If there is an excess value of the seized property over the value of the property delivered to the owner, the owner must compensate the infringer with the difference.
- Publication of the judgment at the expense of the convicted person by means of notices and notifications to all interested persons.
How do you prove trademark infringement and damage?
To prove trademark infringement, you must prove that the infringer has copied your trademark in court. But, in addition, if you are claiming damages, you must also provide evidence of damage with invoices, expert reports, etc.
At Martínez-Sanz Lawyers we are specialists in commercial law. In case you find yourself in a situation of trademark infringement and need legal advice, please do not hesitate to contact us at.
