A trademark infringement claim is a pre-trial notice sent by a trademark owner to a potential infringer of the trademark. The claim notifies that the trademark has been infringed and demands that the infringer stop using it illegally.
If you receive such a claim, the main thing is not to ignore it. The first thing to do is to determine whether it is justified. This will determine your further steps and defense strategy.
A competitor has the right to file a trademark infringement claim if:
They have a legal basis for using the trademark, such as a certificate or a license agreement with the owner of the trademark.
They are actually using the trademark, and are not abusing their right of ownership to harm another business.
Your marks and theirs are similar to the point of confusion, that is, to the point that consumers can confuse them.
The trademark is used in similar activities (identical or homogeneous classes of the International Classification of Goods and Services) — for example, the Liliya restaurant (class 43) and the Liliya coffee shop chain (class 43).
You use the trademark for commercial purposes — that is, you make money on it.
For example, if you create an advertisement with a competitor’s logo registered as a trademark, the competitor will have the right to demand that you stop using it. Or if you accidentally copy a company name without checking in advance whether it belongs to someone, this company will also have the right to send you a claim.
A competitor does not have the right to send a claim for illegal use of a trademark if:
- The competitor’s trademark registration application is still being considered — that is, he has not received a response from Rospatent that the mark is registered and belongs to him.
- The competitor’s trademark is registered, but he does not use it, but abuses the right of ownership in order to harm another business.
- Your and his marks are not similar to the point of confusion.
- Trademarks are used in different types of activities – for example, the women’s clothing store “Chrizantema” (class 25) and the dance studio “Chrizantema” (class 41).
- You do not make money from using the trademark.