Trademark Opposition, Passing Off and other IP Disputes

Solicitor in Leicester Specialising in Intellectual Property Disputes

This page is useful for: 

• Trademark Disputes
• Trademark Infringement
• Opposing a trademark
• Challenging a trademark
• Design rights
• Copyright disputes
• Passing off
• Cease and Desist Letters
• Injunctions

Hello, I’m Steven Mather and instruct me and you’ll get a real expert in Intellectual Property (IP) disputes – one of few proper specialists IP solicitors in Leicester and the Midlands, backed by the team at Nexa Law. On every matter my clients get:

• Plain English Advice
• Speed – we know IP matters require fast and efficient work
• Results – getting you the best possible result
• Value – working on fixed fees where possible
• Convenience – meetings by phone, video call or in person at a time to suit you.

What are Intellectual Property disputes?

Intellectual Property (IP) is the protection of things like copyright (the written word), trademarks (brands and logos) and patents (inventions).

If you own Intellectual Property, you’ve likely invested into your brand to the extent that you do not want other people from copying, known as infringement, or replicating what you are doing.

The vast majority of my IP work as a specialist IP Solicitor is in relation to Trade Mark Infringement and Passing Off, both dealt with below. But we also deal with copyright infringement (someone using the words of your book/seminar/poem/song etc), infringement of design rights (whether registered or unregistered) and patent infringement (someone copying your invention).

What is Trade Mark Infringement?

The Trade Mark Act 1994, along with case law, governs trademark law and trade mark disputes. Section 14 of the Trade Mark Act 1994 deals with trade mark infringement and allows claims for damages, injunctions, accounts of profits etc. Section 10 of the Trade Mark Act 1994 states what infringement of a trade mark means. It can be:

• Using a registered trade mark in an identical way
• Using an identical trade mark to promote similar goods/services
• Using a similar trademark on identical goods
• Using identical/similar mark in a different classification, where the trademark has a reputation

What is Passing Off?

Passing Off is where someone uses your brand/logo (whether it is a registered trade mark or not) and pretends to be your brand, or connected to your brand, or selling on the coat tails of your brand. Jumping on your bandwagon, as it were.

There is a three stage test for passing off which is:

1. Goodwill – the infringed mark must have a reputation and goodwill. So, does the public know or recognise your brand and link it to your business.
2. Misrepresentation – the copying party must have confused the public to believe that their goods or services were yours or from your business.
3. Damage – the infringed mark owner must have suffered loss and damage as a result.

What is Trademark Opposition?

Trademark Opposition occurs when a trade mark is proposed to be registered which is similar to an already registered mark, or is similar but in different classes, or might just be confusing. The Intellectual Property Office (IPO) will usually notify a trade mark owner of such proposed registration, but not always.

To oppose the registration of a trademark, you need to lodge a Form TM7 setting out a standard opposition and grounds of opposition. There will either be absolute grounds or relative grounds for opposing a mark, often both.

You only have 2 months from the date the proposed mark is published in the trade mark journal to oppose, so you need to act promptly.

I can act and advise upon all steps in the process of opposition, including to tribunal hearing. You can also see information on the Government website here

Why use me as an Intellectual Property Disputes Lawyer?

Steven Mather is a very experienced IP Litigation Solicitor. I have dealt with many disputes regarding all forms of IP. I am one of few solicitors in Leicester to have a specialism in IP Disputes, which sees me instructed by Intellectual Property owners across the Midlands, in either bringing or defending intellectual property claims. 

I can help you from start to finish. General steps in an intellectual property dispute might include:

• Sending a Letter of Claim (Americans call these Cease and Desist letters)
• Agreeing Undertakings with infringer/mark owner to stop future infringement
• Urgent Injunctions
• Issuing or defending a claim either in IPEC High Court or County Court
• Exploring settlement eg via mediation
• Preparing for trial
• Winning*
• Enforcement

* In the interests of transparency, I don’t always win, but I like winning and I want to get you the very best result possible. Rest assured, I will fight your corner every step of the way.

Recent examples of Intellectual Property Disputes

Here’s a sample of the kinds of IP disputes I’ve dealt with recently:

• Trademark Infringement in respect of flagpoles sold on Amazon and Ebay
• Letter of Claim regarding similar logos for a Quarry Company PLC client (settled)
• Opposition to Trademark registration for a large PLC
• Trademark infringement advice for smell-alike perfume company
• Large passing off claim for inventor of energy saving eco device
• IP dispute over tooling for car parts manufacturer
• Copyright dispute with seminar provider alleging infringement
• Removing an infringing video from Youtube for a National Sports club.
• Trademark infringement of an British-based Indian-Beer company
• Trademark and design rights advice relating to a dog harness
• Copyright infringement of a consulting using website text
• Copyright infringement of a privacy policy
• Copyright infringement of stock photos online

How much do IP disputes cost?

There is quite a wide range in costs, as it depends on the value, complexity and other party’s actions. The following costs are estimates only, and do not include disbursements such as Court Fees, Experts or Barristers costs. You will be given a bespoke estimate or fixed fee when we discuss your case.

Typically, to settlement of a dispute following a Letter of Claim with Undertakings is around £1000-£4000 plus VAT.

If the matter goes to Court, then IPEC operates a capped cost regime which we adopt as well (although it may be less!). The following includes VAT and Barristers Costs, but not Court fees.

Next Steps

If you’re unsure on the question of fees, or on any aspect of intellectual property disputes then speak to our IP Disputes solicitor Steven Mather.

Just fill in the form on the side of this page, or give us a call to discuss further.