Trademark Infringement: The 8 Most Important Questions and Answers

1. What is trademark infringement?

A trademark is legally defined as a designation for a product or service intended to make it distinguishable in the market. A trademark can be, for example, a logo, a wordmark, a slogan, or even a jingle. To prevent third parties from copying, using, and marketing your trademark without your consent, you can register it as a trademark with the Swiss Federal Institute of Intellectual Property (IPI) and thus protect it. By registering with the European Union Intellectual Property Office (EUIPO), it is also protected throughout the EU.

If a third party uses your trademark after such registration without your explicit consent, it constitutes trademark infringement. This is also the case if not your exact trademark, but one that looks confusingly similar, is used for the same goods or services in the industry. Trademark infringement also occurs if a third party falsely suggests that your products cooperate with their company or brand.

 2. How do I find out if a cease and desist letter is lawful?

First, research the public registration databases such as www.swissreg.ch and the Madrid Monitor. Find out if the owner of the other trademark has also applied for trademark protection. However, to definitively confirm your suspicion, it is best to contact a trademark lawyer. This is especially true if you have received a cease and desist letter yourself.

Assessment of likelihood of confusion

Assessing actual likelihood of confusion is very complex, and there are several evaluation aspects to consider. For example, objecting to a third party who has a similar trademark but operates in a different product or service industry is excluded. For example, a daycare center may use the same abbreviation that you may use for your IT software product. Also, in the case of two similar registered procedures, a lawsuit is rather futile if the purpose of the products is different.

Rights of the prior user

This point also often leads to collisions in trademark disputes. Basically, the right belongs to whoever registered their trademark first in the trademark register.

3. I have been issued a cease and desist letter. How should I respond?

First of all, stay calm. A cease and desist letter means that there is a justified suspicion that you are using a trademark unlawfully. The trademark owner wants you to immediately stop this usage and remove the products from circulation.

It is advisable to immediately engage a trademark lawyer within the deadline. They will thoroughly examine the suspicion. Under no circumstances should you sign the cease and desist declaration or pay the requested amounts before a professional examination has been conducted. Doing so would constitute an premature admission of guilt. However, under no circumstances should you ignore the cease and desist letter and continue to use the trademark. This would constitute a renewed trademark infringement, typically leading to a lawsuit and an injunction. This would result in further consequences for your entire company, which could have been avoided.

If your trademark lawyer is convinced that the cease and desist letter is not justified, there are two options: either you simply defend against the cease and desist letter, or you file a counterclaim.

4. What penalty can I expect if I have infringed on the trademark rights of another?

Upon receiving a cease and desist letter, you must immediately cease using the trademark and remove it from circulation. In addition, you will be subject to claims for damages, the amount of which will be determined based on the actual extent of the damage. Typically, you will also have to pay the opposing party's attorney's fees. If the case goes to court, the actual costs will be much higher.

5. What should I do if I want to report a trademark infringement?

First, check if the third party's trademark has been registered in the IPI's trademark register. If so, file an objection with the IPI. Make sure to do this within the three-month deadline after registration. Also, keep in mind that an objection fee is due, which you must pay. This fee is currently CHF 800 per trademark. An objection form can be downloaded from the IPI's website. If the opposing party wins the claim to the trademark, you may also have to reimburse their attorney's fees.

The other option you can pursue is filing a lawsuit in civil court. In this case, it is essential to engage a trademark lawyer.

6. What claims can I make?

The first and most important demand is the exclusion of the other trademark from the trademark register. This is done through an objection procedure that must be submitted through the IPI. Pay attention to the three-month objection period. If you prevail, you will typically also be reimbursed for the opposing party's attorney's fees.

Through civil court, the plaintiff can assert the following claims:

• Claim for injunction
• Claim for damages
• Claim for compensation
• Claim for information and accounting
• Claim for removal
• Claim for destruction

Before filing a lawsuit, you should definitely have your chances of winning assessed by a trademark advisor.

7. How can I avoid trademark infringements?

The most important point is to register your own trademark with the IPI, the EUIPO, or through the Madrid System. Additionally, you should always keep an eye on market developments in your industry.

You can also commission the IPI for a fee to monitor trademarks for you. Trademark monitoring involves scanning new registrations for signs, numbers, or note sequences that are similar to your trademark. You will then be informed if a third party registers a new trademark that could be confused with yours. Other service providers also offer this service. However, always make sure to use reputable providers.

8. Where can I find a good trademark lawyer?

A long-term good investment is definitely hiring an experienced trademark lawyer. Especially in the case of a warning letter or even a lawsuit, they can provide support and often mediate successfully. Their hiring is certainly cheaper than losing in the defense of your trademark – unjustly, in the worst case scenario. Keep in mind that every trademark owner stands behind their mark and is ready to defend it if necessary. Even if a trademark infringement happens completely unintentionally, it can still turn into a serious legal case.

At GetYourLawyer, we are happy to assist you in finding a suitable trademark lawyer. With just a simple online request, you can receive up to three quotes from experienced attorneys specializing in trademark law, who are a good fit for you and your company.