Trademark infringement: what do you do for trademark infringement?

Introduction

After years of hard work, you've finally built a strong brand. A brand that your target audience knows and appreciates and which is still growing. Then the last thing you want is for someone else to start using a brand name that is very similar to yours and cause confusion among your potential customers. That's called trademark infringement. Therefore, it is very important to prevent trademark infringement.

What is trademark infringement?

Trademark infringement occurs when others use or misuse a registered trademark without the consent of the trademark owner. There are several forms of trademark infringement. For example, others may use a name or logo that is very similar to yours, for products or services that you also sell. Another form of trademark infringement is selling fake products. There is also trademark infringement if your competitor uses your brand name in an online advertisement. This applies to use in the title or meta description of the ad.

Legally regulated

The Benelux Treaty on Intellectual Property (BTIP) regulates the legal protection of trademarks, designs and models in the Benelux. This treaty defines the different types of trademark infringement.

Note: you must register your trademark!

It is essential to officially register your trademark with BOIP, Benelux Office for Intellectual Property, which is the official body for registering trademarks and designs in the Benelux. Only if your trademark is registered (and thus protected), do you have a leg to stand on if you find trademark infringement.

Example of trademark infringement: Red Bull vs. Bullsone

The Korean company Bullsone had been selling car maintenance products for years. In 2011, Bullsone came up with a new logo, which the company also used to sell car products in Austria. The well-known Red Bull felt that the logo was too similar to the Red Bull logo and objected to the use of Bullsone's logo. The highest court in Austria ruled that the logos were indeed too similar. The public could be confused and therefore there was trademark infringement.

Testing of trademark infringement

The key question in determining whether there is trademark infringement is: does confusion occur? For this purpose, three points of similarity are determined: phonetically, visually and conceptually. Does the brand name sound the same when you pronounce it (phonetically)? Or do the products look the same (visually)? Or are the products and services the same and have the same meaning (conceptually)? If any of these points are proven to cause confusion, there may be infringement.

What do you do if you find trademark infringement?

If you see that another company is infringing on your trademark rights, there are several steps you can take:

• Have your lawyer send a summons, a demand to stop the misuse of your trademark.
• Doesn't that work? Then send a very clear letter, as a last chance.
• If the summons and letter do not yield anything, institute summary proceedings. The court can then decide whether there is trademark infringement.
• If there is a severe form of trademark infringement, the other party can also be criminally prosecuted. Then a report must be filed against the other party, or the prosecutor must want to prosecute the party. However, this almost never happens.

Trademark infringement: damages and other financial consequences

If the court determines that there is indeed trademark infringement, there are several consequences for the infringer. Stopping use of the trademark makes sense, of course, but there are likely to be financial consequences as well. For example, as the party bringing the summary proceedings, you can demand these things:

1. Profit transfer (a standard requirement, as the infringer should not benefit from what he has done).
2. Damages (also a standard requirement).
3. Destruction of products and goods.
4. Reimbursement of legal fees.

Domain trademark rights: can you infringe on a trademark with a domain name?

It may happen that another company has a website with a domain name that is the same as your brand name. If the website also sells the same products or services as yours, there may be trademark infringement. But it doesn't have to be. In fact, with a domain name, the rule usually applies: whoever bought the domain first has the right to use it.

Can trademark infringement be time-barred?

Yes, you can. If you tolerate a trademark similar to your trademark for five years, then it is estoppel . This is comparable to prescription, which means that you can no longer take legal action against it. Therefore, don't think "it will go away", but take action if you see that your trademark right is being abused by others.