Use trade marks in your business
Here's how I deal with trade mark infringements
Actinic Software Limited is the UK market leader in e-commerce software for small to medium-sized enterprises. The success of its award-winning products has inevitably led to unauthorised use of the company's trade marks. Co-founder and chief executive Chris Barling explains the measures used to deal with infringements.
What I did
Get good advice
"We began looking at trade marks two years after starting up, when the company really started to grow. We used a specialist agent to advise us as well as information from the UK Intellectual Property Office website.
"Successfully defending a trade mark largely depends on getting it right in the first place. In our case there were particular complications. The word 'Actinic' has legitimate commercial use to describe a type of radiation, so we couldn't trade mark the word across the board.
"Instead, we trade marked the name "Actinic" in relation to computer software. We also trade marked the name of our flagship product, Actinic Catalog."
Know the types of infringement
"We proactively monitor for infringements in our sector and encourage legitimate re-sellers to do the same. As our profile increased, we noticed people 'bolting on' our name to their product or service to imply a non-existent relationship.
"This was followed by people advertising our products fraudulently on the internet, often copying our manuals and CDs and selling them for profit. A third common infringement is people advertising their software on search engines using the keyword Actinic."
Stay out of court
"Court cases are time consuming and expensive, so we view legal action as a last resort. In the first instance, we despatch non-threatening letters to the individual or company concerned, pointing out the infringement. The letter is delivered and signed for by courier so people can't claim they haven't received it. We've found that's enough in the majority of cases.
"Occasionally we have to take things further, but a solicitor's letter threatening legal action has always worked to date. We don't have the resources to warrant taking someone to court just to set an example.
"Where infringements happen via a responsible website, such as Google or eBay, website owners usually operate intellectual property (IP) protection schemes and are generally prepared to help. However, having a trade mark is a prerequisite to joining these schemes."
What I'd do differently
Protect according to ambition
"If you intend to stay small, trade mark protection is rarely an issue, but in our case, we always planned to become a market leader. We should have addressed trade mark issues earlier."
Think about a unique name
"Trade marking has been effective in protecting our IP rights. However, a name that didn't have a legitimate use in the public domain would have made the process easier."
Subjects covered in this guide
- Introduction
- What is a trade mark?
- How to register a trade mark
- Registering a trade mark outside the UK
- Defend your trade mark
- Respect other people's trade marks
- Trade marks and domain names
- Here's how I deal with trade mark infringements
- Here's how I protected my idea with a trade mark (Flash video)
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Chris Barling
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