One of the areas in which we assist large numbers of clients is securing evidence to support an injunction for a breach or infringement of their trademark. We also seek to gather as much evidence as possible to increase the size of any potential damages claim, the more supporting evidence that can be produced to prove the trademark was breached extensively the larger the potential claim and damages. In many cases - depending on the jurisdiction - if it can be shown that the offender deliberately breached the trademark on multiple occasions in spite of and in full knowledge of the breach this can also significantly increase the amount of damages that can be obtained.
When someone infringes your trademark, it can be very damaging to your business, it can cause significant loss through confusion with another brand or by causing clients to have concerns regarding whether the item they are about to buy bought is legitimate, this is obviously very disruptive and damaging to both retailers and wholesalers of the legitimate products. Of course not all trademark infringement is related to retail goods, breaches can equally relate to a service, but the damage and implications are very much the same.
Trademark infringement cases can sometimes be protracted, the most important thing is to prevent the person or organization which is infringing the trademark from obtaining any benefit while the proceedings are underway. Securing injunctive relief at an early stage will create a situation where the trademark cannot continue to be used by the offender and it's also possible to approach any party using it on behalf of the infringer such as resellers, social media, magazines, blogs and promotional materials. Once injunctive relief is granted if the party infringes the interim injunction they can immediately be brought before the courts for contempt.
Quite often we find that either a simple email detailing the breach or a cease-and-desist letter will suffice to resolve matters, the next stage would be to take legal action against the party breaching the mark. The legal companies we work with often recommend obtaining trademark injunctive relief alongside legal proceedings which are launched at the same time as the application for a preliminary injunction, once the case has concluded in favour of the trademark owner this injunction would then become permanent.
The main advantage of obtaining an interim injunction is it can usually be done quickly and creates a significant problem for the party infringing the trademark, this is because without any warning they suddenly have to contact their legal advisers who will tell them that they must inform their various contacts regarding the situation to ensure offending content is removed. The contacts could include dealers, magazines and business associates, in essence anywhere articles breaching the trademark have appeared they will have to ensure they are removed and the various parties are informed. Failure to inform any of the parties whom they are aware have any form of content infringing the mark in the public domain would be deemed in future proceedings to be potentially extremely negligent, and could have very serious repercussions. One very important consideration is that it goes without saying that for the offending party to have to notify their business associates and other parties that they are in breach of an injunction is extremely humiliating and damaging. The parties involved would inevitably have considerable concern because the interim injunction also means that they are obliged to carry out steps to remove offending material which can create a significant amount of work with no benefit to themselves. Obviously this would have very negative implications across the board for future relations between those parties and the individual or company that has infringed the trademark.
Whilst we are enquiry agents and not lawyers our role in securing trademark injunctions is to liaise with the legal advisors who are engaged by our clients, we work closely with a number of specialist law firms to whom we can introduce you if required. We are normally instructed by either a law firm or by clients directly to gather information and evidence regarding both the offender and the infringement, we will also compile a file of where all the various breaches appear, this can lead to what some lawyers refer to as "shock and awe" this is because without warning and over a short period of time (a day or two) multiple parties are served with a copy of the interim injunction and obliging them to immediately remove the offending material. This would obviously lead to a situation where extreme stress will be caused to the offending party because they will be inundated with emails and telephone calls asking exactly what is going on. Also, many businesses and individuals will be very concerned by such a situation and will not want to be involved in any type of legal dispute where the onus of removing the offending material is suddenly shifted to them because it can be extremely time-consuming and challenging.
For small companies and social media as well as magazines the removal of the offending material can prove to be extremely difficult, for this reason in many cases we have discovered that the offending company is frequently banned from the platform because it's easier to remove everything than spend a lot of time trying to find every single piece of infringing text. Sometimes we inform the various platforms that we are proposing to take steps but we will not define exactly what they are or refer to an interim injunction because that could lead to the offender being tipped off as to what is likely to happen, once magazines and social media are informed that there is a breach they will normally file it with their intellectual property department who will immediately refer to it once the interim injunction is presented to them. Because we are private investigators and not lawyers we have certain advantages whilst making enquiries not available to a law firm but suffice to say that when any company or organisation is approached by an investigation agency it will have the same impact as if they are contacted by a lawyer except it will be somewhat less clear exactly what is going to happen and when.
Depending on the jurisdiction there are also various other remedies depending on where the breeches appear, for example in the UK the High Court has jurisdiction to order an ISP to block access to websites using the ISPs services to infringe any intellectual property.
In many cases when contacting various social media platforms or large organisations the law firms we work with will simply refer them to the details of the legitimate ownership of the trademark and the nature of the breach, their own intellectual property departments will realise exactly what is going on and frequently take steps at this stage to remove everything that refers to the infringement rather than having a situation at a later stage where it has to be done within a very short space of time. In the case of social media and magazines they can quickly search for attending content, this means for example that if the trademark was ABC123 they can go through everything on the servers to locate it and remove all the offending content at the same time. As an example in one recent case involving a clothing brand they had a vast amount of postings on social media, in online magazines with reviews, reviews on Trustpilot and also various blogs which breached the trademark of one of our clients, this content going back over 3 years was very important to them because the social media postings were accounting for around 30% to 40% of their total sales, once the offending postings were removed which happened over a period of 48 hours they saw a sudden dive in profits and sales. The bizarre thing was that they had already been contacted by our client and also served with a ceased and desist letter, the firm collapsed into administration very shortly after these events arose but none of it need ever have happened if they had simply cooperated and ceased to infringe our clients trademark.
Whilst we operate in many jurisdictions one factor in English-speaking jurisdictions operating under common-law is that the procedures are usually very similar because everything is based on case law and precedent. This means if there is a multiple breach in different jurisdictions the preparation of the documentation is not going to differ greatly and what is produced could be modified slightly and used for another. This particular factor is important because it potentially reduces the costs.
To secure injunctive relief you would need to take legal advice. Prior to obtaining legal advice we can obtain the evidence which you can then present to your legal advisers, this will certainly speed things up because they will normally require it either in advance or request that it be secured afterwards. Frequently the legal advice as well specific requirements but because we work with them closely on an ongoing basis we can pretty much determine exactly what will be needed so the worst way at least 80% of it will already have been obtained and prepared.
The most important thing in order to obtain injunctive relief is that you are able to provide evidence regarding the points below.
- It goes without saying that the most important point is that you currently own the trademark. You also need to confirm that in all probability you are likely to win the dispute and that the breach is sufficient to justify an application for injunctive relief.
- You need to be able to also show evidence that the breach of the trademark is causing you loss and damage.
- Another important factor is you must be able to show that if you do not receive injunctive relief the consequences will cause your business serious and potentially irreparable damage. It is this area that can sometimes be the most difficult to prove but most law firms will usually state in the proceedings that no other legal remedy will deal with the problem within the necessary timeframes.
- You can also state that the sale of the goods or service is causing confusion and therefore it is in the public interest that injunctive relief be granted to avoid the public being misled.
The areas in which we would normally seek to obtain evidence for interim injunctive relief are below.
- Has the offender infringed the trademark on their website or in materials which they make available to the public?
- Does the breach appear extensively on the Internet?
- Have there been publications which contain the infringements of your trademark?
- Do any infringements appear in respect of soliciting investment or in some cases crowdfunding? In the case of crowdfunding the lawyers with whom we work in partnership would contact the platform to advise them of the ongoing situation. This is very important to prevent loss to those investing in the business.
- Does the breach appear frequently on social media? For example if the trademark is ABC123 does it appear on Facebook, Twitter, Instagram etc?
- Has the offending party referred to the trademark in their own publications or publicity?
- Finally does the trademark infringement appear on information supplied with the product or service to clients?
Once we have gathered an extensive amount of evidence we would present it to your legal advisors and they would then take over and secure the necessary injunctive relief. If you need further information or assistance feel free to contact us and one of our specialists can advise you further.