Trademark Infringement help needed please

[KateCB]

We had some karate suits made, which when they arrived were not to our standard and were rejected. The manufacturer arranged for someone to collect them and it turned out to be a newish, local competitor.

We were surprised a few weeks later when out instructors started caling to ask if we were closing down, as they had had some of their students buy our suits, conplete with our labelling and trademakred logo on them from this competitor, who told them that he had bought the stock cheaply as we were closing.

I have written to him asking him to stop selling until he has removed all labelling showing our trademark from the suits and packaging, OR pay us a licence fee for the use of our trademark for the suits he took; no response. I also attached a copy of the trademark certificate so he can se that I am not playing around.

The thing I am worried about is that I have been told that to take legal action against him to 'cease and desist' will cost me thousands, which I dont have, plus his companies house record isn't good (dissolved companies spanning around 10 years, late filing fines, struck off the register etc) so even if I borow the money to take the action, in the event of a favourable court ruling there may be little hope of getting the money back- meanwhile as far as I am aware he is still selling the suits with my branding and telling people we are closing down.

Anything I can do that won't make me bankrupt?

 

[KateCB]

I can't believe that 49 people have looked at my problem and no-one has any advice -come on people, its Tuesday and I have to have a battle plan for Friday......please?

 

[Zeno]

I don't believe that they have infringed your trade mark. It would seem that they are selling items similiar to unauthorised factory seconds. I am not sure what legal remedy this leaves you with but it will undoubtably be expensive.

Will the problem not cease to exist once he has sold this particular consignment with your logo on?

 

[KateCB]

it will yes, however he has not bought the goods from us and is using our logo - which is trademarked; we are not benefitting from his selling the suits with our logo on, in fact we are losing custom as he is selling cheaply - people are buying what they think is the Accent brand, and basically are being sold something that our brand 'accent' rejected - if they are unhappy with this particular suit, then this obviously will reflect badly on our brand as the suits are clearly marked with our brand/logo in three places......plus of course he is selling in our branded/trademarked packaging!

To compound it, he is telling his customers that we are closing down - possible defamation there?

IF we had sold them to him then he would buy the right to use our trademark, but as we didn't, then he has no right to use it surely?

 

[Modern Print]

The first thing I would do is speak to my local Citizens Advice Bureau to see if they could give me any advice. Failing that I would check if the trade organizations I am a member of have a free legal help line such as the FSB and CMI. Indeed you may be a member of a trade specific organization that may be able to mediate for you.

As for legal action why not see if you can use the small claims court. You see most legal expenses cannot be claimed back hear which means that you represent yourself and only pay the court registration fees. Give your local court offices a ring in the morning and ask there advice on the best legal approach for you.

My local court is very helpful and the leaflet's are pretty east to understand.

Trevor. Printing and graphic design in Pembrokeshire.

 

[Modern Print]

PS I forgot to say how sorry I am that your nave been put in this situation. I can quite understand you being very annoyed about it

Trevor.

 

[Dawg]

Tell your local Trading Standards tomorrow morning. They are not at all keen on people selling stuff that isn't what it is claimed to be, and the fact that porkies are been told about your trading status will hopefully spur them into action.

 

[KateCB]

hopfully - small claims court can't help apparently as the amount we aretalking about is too big; FSB solicitor dictated a cease and desist letter which we sent by Special Delivery along with the opy trademak certificate - the FSB legal people say that could sue for infringement, passingoff and defamation however.......as I said I am a bit worried about spending more money as he is know to be dodgy.....I have been told by another source within our industry not to waste my time and money as he may no longer be around in a few days time as his business hasn't performed - could be hearsay, but I am annoyed about it all - we have worked hard developing and promoting the brand - I don;t want what I consider sub-standard goods out there with MY name on them!

Thanks for thehelp guys, i'll see what weekend brings and hope he contacts me or does indeed disappear...fingers crossed!

 

[Johng513]

The cheapest way to protect your brand is probably to take out an ad in the local paper or even contact them and see if they will run a article explaining what is happening and how this is impacting on your business in what are already tough times. It won't get you any money but the legal costs will probably be more than you can get in compensation.

 

[Lime One]

Given that this sort of business is not likely to abide by any court order and probably not have the means to pay anyway it is better to go down the trading standards route. A well drafted article on your web site as well as in the local press regarding the unauthorised sale of items your business rejected would do a lot to raise your profile locally also.

For the future there is IP insurance that will cover legal costs, try www.phpl.co.uk for further information on this.

 

[KateCB]

good idea - I will contact our pet journalist at the localpaper and see what he can do - he has been good for us through the years, sohe may be able to help on this one!
thanks for that!

 

[Deleted member 13430]

This is trade mark infringement in a technical sense.

You have rights to the trade mark. Rights to trade marks are said to be exhausted when the product is sold (I am ignoring grey importation of branded products from outside the EEA issues). Thus when Volvo sell a Volvo branded car they can not then sue someone for selling that genuine car on under the Volvo mark by describing it as a Volvo branded car. You did not consent to those branded products being sold and they are carrying your mark, you gained no benefit from that sale and thus your trade mark rights are not exhausted and in theory can be enforced.

I assume the number of products sold where relatively low. So can't see the benefit of actually launching an infringement action. Although you can claim damages etc IP actions are very expensive. Insurance would possibly not be forthcoming for such an action.

Thus go down the trading standards route, cause a fuss maybe ask for compensation from the otherside and then leave it. With the press or ads be careful what you say you don't want to be on the end of trade libel/defamation action.

 

[kabby911]

I know nothing about law but I will make a point anyway Surely the company that made the products, then sold them onto someone else have infringed on your trademark? or am I very wrong?