What happens if I use someone's trade mark by mistake?

This blog post was first published on 25 November 2020

We regularly share content over on Instagram and Facebook explaining why it’s important that you have a trade mark for your business. We’ve even dedicated previous blog posts to it: Why Do I need A Trade Mark? and How to Get A Trade Mark, but what about if you’re new to running a business or you’ve never realised until now that you need to be aware of the names of your courses and programmes in case you infringe on someone else’s trade mark?

What happens if you use someone’s trade mark by mistake?

If you’re here it’s likely that you are a business owner who either has an idea for a service, course or product which you want to launch ,or that you’ve been putting off getting a trademark for an idea you’ve been using in your business for a while. Maybe you’ve been dreading looking at the legal side of things....Maybe you have put registering for a trademark on the back burner for the time being until things are quieter and when you have more time and head space....We hear you that the legal side of things can feel overwhelming, especially when you are already busy serving clients ,launching offerings ,posting on social media and legal isn’t your area of expertise. We know this might not feel like an urgent priority for you in business right now.

However, it saddens us when passionate business owners reach out to us because they’ve received an email or a letter from another business owner asking them to “cease and desist” because they’re using their trade mark. Their trade mark? Those that get in touch with us may have spent countless hours, months or even years working hard at creating something impactful and are now left feeling daunted and disheartened by receiving this message mid or post launch. The harsh reality is that this does happen, and it’s important to shed light on what happens if you do use someone’s trade mark by mistake.

Unauthorised use of a trade mark is a criminal offence and carries a sentence of 6 months and/or a £5,000 fine.

The online business space can feel a bit like the Wild West at times and you may not know where you stand legally if you were in this position, we wanted to dive into this in this week’s blog.

What are the legal implications for me and my business?

It is important to make it clear at the outset that using someone else’s trade mark with out their permission is a serious matter. It is known as Intellectual Property infringement and could potentially lead to a fine, prison or both. GULP. Don’t panic though, you’re in the right place to find out more. Unauthorised use of a trade mark is a criminal offence and carries a sentence of 6 months and/or a £5,000 fine. At the same time, please don’t panic-there are actions that you can take to prevent this from happening.

If someone finds out that you have been using their trade mark without their permission, not only may you face the sanctions listed above but you may also be liable to the mark holder for damages. So if for example, you have £10k launch with your course or membership then the owner of the mark may claim that they are entitled to those profits, as lost profits of their own due to your use of their mark. This is known as ‘Account of Profits’.

They may seek to claim that you traded using their goodwill, passing off as their brand. Alternatively, they may state that if you had asked for permission to use the name they would have given you a licence to use their mark for £X and then seek to recover that sum from you.

In addition, you may also be required to deliver up or destruct of any infringing goods and pay at least a contribution to the other person’s legal costs.

If you have a £10k launch using someone else’s trade mark then they could request that you surrender the profits you have made.

What if I copied someone’s mark by mistake?

In this blog we’ll be exploring a few scenarios whereby you may be using someone’s trademark by mistake and what options you have as a result:

If you use someone’s trade mark by mistake they realise before you do, they may request that you stop using their trade mark through a “cease and desist” letter .In this scenario, it would be wise to seek out further legal information as to what to do next. Depending on your individual situation you may need to stop using their trademarked idea and to make any changes necessary to comply with their request. If you then proceed they could seek to recover money from you for infringing their Intellectual Property. Or they could move straight to legal proceedings against you for trade mark infringement, which as outlined above, could lead to a fine, or prison or both.

If you discover you’re using someone else’s trade mark, one option you have is that you can file for a licence to use their trade mark. Please note that both business owners must agree to the terms of the licence, including how long it will last and the cost, and ultimately this isn’t something you can guarantee will happen. If you and the other business owner do agree to the terms of licence, then you must file a TM51 form to the Intellectual Property Office.

Alternatively, you may also both be able to continue to use an identical or similar mark if you make a co-existence agreement. Whilst this is an option, this is something you should also think about carefully, as this may result in limiting the scope of your business so that both businesses can co-exist without causing customer confusion. Whilst this may not be an immediate problem, it may limit what you can launch at a later stage. For example, if you’re a coach who might be interested in writing a book in the future, you may not be able to launch a book under that name if the other business owner has a book under an identical or similar trade mark. If you want to have freedom in where you go take your business in the long-term, this is worth bearing in mind. Ultimately, it is better to prevent yourself from using someone else’s trade mark than facing a less than ideal range of options and potential consequences later down the road.

The good news is that Lucy is here to teach you How To Get A Trade Mark with her mini-course. 

We’d love to help you to put your mind at rest and support you to protect your business idea & ensure that you don’t use someone else’s trade mark by mistake.

If there is anything we can do to support you during this time feel free to drop us an email to [email protected].

Team Lucy Legal x