How to Protect your IP and Listings with a Trademark

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Why write this guide?
I got fed up of wasting another three hours of my life on another weekend "arguing" by email with yet another online seller about listing violations and breaching my trademark and copyrighted images of my products on three other online selling channels.
Advice: Most sellers on this site and other sites are hardworking and honest. Trademark infringements are often a mistake, or done in ignorance. So before taking any action, remember to be polite, helpful, and give the other seller a chance to put things right.  Remember that it is a serious matter to accuse someone of trademark infringement, because it alludes to criminal laws being broken. Treat others as you would expect to be treated.
The situation comes up more and more frequently, and it isn't going to get less frequent as time passes and more people jump onto the online selling bandwagaon with little or no experience or knowledge of business law.
You might read some stuff you didn't want to hear, like how hard it is to prove infringements of unregistered marks, as well as the benefits of registereing your trademark.  So if this helps you, It's done some good.
So what is a trademark?
There are two types of trademarks.  Unresgistered trademarks, and registered trademarks.  Your business name, seller name, or amazon/ebay/etsy store name is technically your trademark and your brand, even if it isn't registered.
The IPO say a  trade mark is a sign which can distinguish your goods and services from those of your competitors (you may refer to your trade mark as your "brand"). It can be for example words, logos or a combination of both.
Even if your company name is registered, this isn't any proof of your "brand" and it's not a trademark.
However registering your business name as a trademark (in the UK this costs about £170) means that you have a very easy job indeed of getting infringing listings removed, unregistered names are a lot harder to get the attention of ebay or amazon.If you don't register your trade mark, you may still be able to take action if someone uses your mark without your permission, using the common law action of passing off instead.

To be successful in a passing-off action, you must prove that:

  • the mark is yours
  • you have built up a reputation in the mark
  • you have been harmed in some way by the other person's use of the mark.

NOTE: It can be very difficult and expensive to prove a passing off action.

If you register your trade mark, it is easier to take legal action against infringement of your mark, rather than having to rely on passing off. Trademarks are registered in the UK via the Patents office.  It takes about three months. You can register words, or your logo, or both.  Its a simple process online now.

Once your trademark (brand) is registered it is "proof" that its yours, and if you say someone else can't use it, or is using it without permission (eg copying a listing for goods that you make) then that is all that Amazon or Ebay need to remove the listing.  It is usually good enough just to tell them the trademark has been "Filed" (this gives you a reference number, although the trademark has not yet been registered)
If you are feeling nasty, or the offending seller has lost you sales, You can also report offences of trademark infringement to your lown local Trading Standards department, and remind them that there is the Patent Office Database (the tellpat database ) to add the information to.  To get action from Trading Standards you also have to sometimes remind them that they are obliged to support local business and economy, so if you think you or your staff are going to suffer financially, mention it.
Further action is for your lawyer to send a cease and desist letter. Should cost you £70 to £100. This is quite a heavyweight option, as it requires the offending seller to recall all the goods he's sold to consumers, and deliver them to you, plus all his stocks of the counterfeit goods to you.  He has to agree not to use your brand or trademark, and he also has to come to "an arrangement" for any lost revenue.  Basically it takes a lot of their time, and makes sure they will not mess with your trademark again.  Having a registered trademark has taken all sorts of legal arguments out of the equation for you.
What is the criminal law about using someone elses trademark or brand? Basically this: Two criminal offences are being committed

Firstly, under the Consumer Protection from Unfair Trading Regulations 2008, it is an unfair commercial practice to mislead consumers about the manufacturer/producer of a product. If it is done knowingly to cause loss to another or for a gain for yourself or another it is also a fraud by false representation contrary to the Fraud Act 2006.
So that's the law, but actually getting something done about it is another matter without a registered trademark. Online selling channels are slow to act if your trademark or brand isn't registered. But the law is supposed to apply to registered and unregistered trademarks, so be persistent.
If you intend to take action, you should keep all the evidence you can find. Emails and messages, screenshots of the offences, and note the date you first became aware of the infringement.
Some online selling channels appear to think they are above the law, and unscrupulous sellers try to hide behind this. So it is sometimes better to take the channel (ebay/amazon/whatever) out of the equation and deal with the offending seller directly.   Don't bluff, and don't threaten anything you are not prepared to carry out.
Make it a policy to stomp all over someone who deliberately violates your trademark or business name or listings if they refuse to co-operate, but always be polite, and give them a chance to delete or alter the offending listing first in case it was a genuine mistake.  Be fair, be consistent, be professional.

FAQ

  • How long does a trademark last? 
    Ten Years. Then you have to renew it.
  • Does my ownership of the domain name secure my ownership of the name as my brand?

Unfortunately Ownership of a Domain Name, or registration of a Company Name, does not provide any registered trade mark protection regardless of how many years you have owned the domain name. In law they are all completely separate. For registered trade mark protection your brand must be registered as a trade mark.

  • How can I check if the name or image (logo) I want has been registered as trade marks?

You can check whether phrases have been registered by using the UK online trade mark search facility on the IPO site and access a search facility. - First click on 'trade marks', secondly click on 'on line services', thirdly click on 'find trade marks' and finally click on by text or image. You can then search trademak words alphabeticaly, and images by theme.

  • How long does it take to register?
    Once you apply online, it should take a week or two for the "examination", then your proposed trademark is published in "the journal" while they wait and see if anybody objects to it.  If the examiner doesn't raise objections (eg. no rude words, not too generic, etc) and it isn’t opposed by someone seeing it in the journal, it will normally proceed to registration - 2-4 months depending how busy the sytem is.

To register a trademark in the UK - and find out much more search "UK Trademarks IPO" or a similar search for your own country.


* This is just an outline introduction to trademarks.  If you are unsure of your position always seek professional advice, and view the official trademarks web site for the country you do business in.  This guide is only intended to very broadly outline the courses of action that may be open to you if yor brand or trademark are infringed.


 






 
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