Recent trade mark rulings, including the Supreme Court decision last week in Lifestyle Equities v Ahmed, all emphasise the potential risks of delaying enforcing trade mark and other IP rights in the UK. In the extreme, delaying can result in trade mark owners losing the right to take action against the use (and registration of) the later right. Here, we briefly summarise the reasons not to delay.
Acquiescence
UK trade mark law provides that the owner of a registered and/or unregistered trade mark can – in certain circumstances – lose the right to apply to invalidate and object to the use of a later registered trade mark. This occurs if the owner of the earlier mark has knowingly acquiesced to the use of the later registered mark for five continuous years. The owner of the earlier mark does not necessarily have to be aware that the later mark is registered. What is required is that the later mark has, in fact, been used in a continued way for five years while registered and that the owner of the earlier mark has been aware of that use. It is now quite common for acquiescence to be raised by defendants to invalidity and infringement actions (if their mark is registered). To avoid such claims, brand owners must not allow claims against the owners of later registered marks to drag on (which can sometimes happen if there are lengthy settlement or co-existence negotiations). Where a deal cannot be reached, they must bring an action for infringement before the end of the requisite five-year period to avoid a claim of acquiescence (see our guide here).
Honest concurrent use
Honest concurrent use is sometimes raised by defendants to trade mark infringement claims. The argument is that - since the marks in question have co-existed in the marketplace with no apparent confusion or other adverse effects - there is no infringement. It is essentially a no confusion / adverse effects argument (see our article here). Honest concurrent use can even be raised if the defendant started to use its mark after the trade mark alleged to have been infringed was registered. In other words, use that is initially infringing can become non-infringing due to honest concurrent use (albeit rarely). While honest concurrent use can be quite difficult to show, it is another reason for brand owners to take swift action against the use of allegedly conflicting marks before any concurrent use is established (or arguable).
Evidence of actual confusion or unfair advantage/detriment
The longer an infringement has been allegedly taking place, the more the courts will expect the owners of registered trade marks to produce evidence of actual confusion (for a confusion-based claim) (see eg the Nuclei case here). Given how difficult it can be to find and validate evidence of actual confusion, this is a significant reason for brand owners not to delay asserting their rights (for a case illustrating that difficulty, see here). The same is true for reputation-based claims – the longer an alleged infringement has been continuing, the more the courts will expect to see evidence of a change in the economic behaviour of consumers to support the unfair advantage or detriment claim (see eg here). Although the lack of this evidence is not always fatal, the burden on brand owners arguably increases over time, particularly where the case is marginal.
Accessory liability
Lastly, the Supreme Court has recently introduced a new knowledge requirement into accessory liability for trade mark infringement and other torts (including strict liability torts). Accessories are those who do not commit an infringement themselves but procure another to infringe or join in a common design with another to infringe. They can include directors and senior employees of companies where the company itself commits the infringement. From now on, for an accessory to be liable, it will be necessary to show that they had "knowledge of the essential facts which make the act done wrongful" as well as demonstrating that they procured an infringement or joined in a common design to infringe. In the case of trade mark infringement based on a likelihood of confusion, this would mean knowledge of the existence of the trade mark alleged to be infringed and of a likelihood of confusion. This is yet another reason to put potential infringers (including directors and senior employees) on notice of your rights early and fully, including details of the rights alleged to be infringed and why there is eg a likelihood of confusion. This is particularly important where the infringement is not clear cut and where there is scope for the company itself to be liquidated to avoid any potential damages or compensation payments.
A wording of warning
While asserting (and, if necessary, enforcing) rights without delay is key, care should be taken that no counter-claim for unjustified threats of infringement can be brought. A claim for damages for unjustified threats of infringement can be brought in certain circumstances by any person aggrieved by a threat. This is particularly important where threats are made against potential accessories and those further down the supply chain. Specific advice should be sought before any letter is sent.
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