Infringements of design and trademark rights do not necessarily have to result in an expensive lawsuit. Keep reading for advice on how you can enforce your rights without taking the matter to court.
The realization that another company is infringing your design or trademark rights can be hard to swallow. Not only do you risk losing money due to the fact that someone else has copied your idea, you now also all of a sudden need assistance from a lawyer, which can be both expensive, time consuming and stressful.
Or is it?
In reality, it is not necessary to take infringement cases to court in most cases. Often, there are simpler and much cheaper measures available.
“There’s no reason to use a sledgehammer to crack a nut. If the infringement is very serious and damages the company’s reputation, there will most likely be grounds for a lawsuit. But if that is not the case, there are a number of other effective measures, which you can make use of,” says Ida Rømer Johannesen, European Trademark and Design Attorney at Plougmann Vingtoft.
In the following, she guides you through five of the most common measures for enforcing your design or trademark rights – without worrying about lawsuits and expensive legal fees.
1. The cease and desist letter
A cease and desist letter is a good place to start. Especially, if you think the infringing party is open to argument. A cease and desist letter is a short and concise letter that usually revolves around the following:
- The nature of the infringement
- Which legislation is being violated
- The violated party’s demands
- The amount of time the infringing party has to remedy their actions and comply with the violated party’s demands
The letter does not necessarily have to be written in a complicated legal jargon. Sometimes it may even be beneficial to write the letter in a jovial tone like Netflix did when a pop-up bar in Chicago copied several ideas from the Netflix series “Stranger Things”.
In fact, it may be a good idea not to be too confrontational in the first attempt of contact. Things have a habit of making it onto the internet rather quickly these days, and that is exactly what happened to Starbucks, when one of the coffee chain’s cease and desist letters were uploaded to social media by the infringing party.
In most cases, a cease and desist letter gives rise to a constructive dialog with the infringing party about how to resolve the situation – without the matter making it to court.
2. Opposition and cancellation requests
Once you have protected your idea, remember to also keep an eye on if others infringe it.
One way of doing so is by having a trademark and design attorney monitor (watch) the trademark. If we discover a trademark infringement, and you have a better right in the country in question, you can choose to file an opposition.
Oppositions are handled differently from authority to authority but in general, the authority sets a deadline within which, the opposition must be filed.
If you discover the existence of an infringing trademark after the expiry of the opposition deadline, most countries allow for requesting an administrative cancellation. The process for requesting an administrative cancellation is much like filing an opposition.
If you find yourself in a situation where you want to request an administrative cancellation of a trademark, you should be aware of the rules regarding acquiescence. If you have tolerated and been aware of the infringing registered trademark for more than five years without filing a request for an administrative cancellation, your right to “object” to the trademark disappears.
It is also possible to request that an infringing registered design be administratively invalidated. This is both possible in Denmark and through the European Union Intellectual Property Office, EUIPO.
3. Enter a coexistence agreement
If you discover that another company holds registered rights that are similar to your rights in many ways, but you do not think that you or the company will actually be competing in and for the same market and customers, it may be beneficial to enter a coexistence agreement.
Imagine the following: You own a software company that holds a trademark for “apps”. Then one day you find out that another company is also filing for a trademark, which is identical or similar to your trademark, for “apps”. On paper, that would be an infringement, but in reality, it may make more sense to ask the other company to not use its “apps” within your areas of business or industry. This solution especially makes sense if the other company operates in a market/country that you would like to enter – in that way you both get something out of it.
With a coexistence agreement, you can thus achieve a common understanding that neither of you will use your respective trademarks in ways that could result in confusion between the marks in practice while you can both expand your businesses at the same time.
4. Customs surveillance
If you suspect that a counterfeit design or trademark product from, for example, China is being imported and sold to the detriment of your company, you could benefit from setting up a customs surveillance.
Most countries offer the opportunity of customs surveillances, and requesting such a surveillance will actually help the local customs authority by letting them know what they should keep an eye on.
In the EU, a customs surveillance can be set up for one year at a time. Get started by filling in the form on the Danish Tax Authority’s website.
5. Surveillance on e-commerce platforms
Just like the customs authority can help you monitor counterfeits, the algorithms on e-commerce platforms such as Alibaba, Amazon and eBay can also help you monitor and pin down whether others are selling products that infringe your design or trademark rights.
For an overview of the available tools, read our article on this exact topic.
Do you want to know more about how you can enforce your rights? Our experts have extensive experience in advising companies in all industries on the protection of their rights. Contact us, if we are to help you enforce your rights.