The Online Entrepreneur: Protecting Your Brand Online

In order to give you the best possible chance of taking effective action to stop unauthorised use of your brand in an action for trade mark infringement or passing off, you should make sure that your staff are instructed to collect information as follows:

A. Evidence of Trading Reputation 

• how long you have been trading under your brand?

• over what geographical territory (i.e. where do your customers come from)?

• details of turnover from as far back as possible

• numbers of people who visit your website

• numbers of sales made, to whom and where, supported by invoices;

• details of advertising and marketing of your brands in other media; any awards you may have received;

• trade or customer shows you have attended; any other independent data showing how well-known your business is, such as competitor League Tables

B. Evidence of Misrepresentation / Customer Confusion

• Take immediate notice of online emails or tweets or other electronic communications details of date and time you received them and the sender

• Keep full details of telephone calls, letters or reports at customer / trade shows which suggest that there has been confusion keep the letters in a file which relates to the legal dispute

• For telephone calls, take an accurate note of the conversation should be taken, or a recording which is transcribe as soon as possible.

• In all cases you should get the name, address and as many contact details of theperson making the report or complaint as possible and ask if you can get in touch again to follow up.

C. Damage

• Can you show you have lost actual sales or sales opportunities because of the confusion?

• Have you noticed a drop in turnover that corresponds to the infringing activity?

• Have you granted any licences with a royalty rate to others? If so this may help to assess damage

• Is your reputation suffering damage? If so, obtain details to prove this?

• Are the competing goods poor quality or even dangerous?

• How serious is the impact on your business? Could your business collapse if the infringement is not stopped urgently?

D. General Points

• Act quickly to gather evidence and assess how serious the threat is

• Take a clear decision what action you wish to take, then be firm and consistent

• Work out what is most important for your business: is the priority to stop the infringement quickly, or to make an example of the infringer by insisting on damages and costs?

• Take great care when complaining about trade mark infringement: you couldend up be sued by the “infringer” for making unjustified threats

E. Further Advice

If you would like help:

• doing clearance searches or filing an application for a registered trade mark, we can recommend a suitable trade mark attorney

• with any potential legal dispute, a problem with a domain name, or a commercial agreement such as a licence, let us know.

For further information please contact:

Neil Eggleton on Neil.Eagleton@collyerbristow.com