Enforcing Your Rights
We assess the strength of your registered and unregistered rights, secure the evidence and choose the route most likely to stop the infringing use quickly.
Infringement · Passing Off · Oppositions · Invalidity · Settlement
Trademark Dispute Solicitors
Protecting your brand and resolving conflicts with confidence.
We act for brand owners, and for businesses accused of infringement, in trade mark, passing off and brand disputes. Our strategies are practical and commercially focused, drawing on over 25 years' experience in intellectual property law.
Experienced Trademark Dispute Solicitors
Trade mark disputes often go beyond simple oppositions. Whether you face an infringement, passing off or invalidity claim, or need to stop someone trading on your name, we protect your brand in the UK and coordinate action where your marks are registered abroad.
Defending Your Business
If you are accused of infringement, we test the claim, look for defences and challenges to the other side's mark, and protect your ability to keep trading.
Commercial Outcomes
Most disputes end in a negotiated outcome. We give realistic advice on costs and risk, and litigate when that is what it takes to protect the brand.
Key Trademark Dispute Services
Trade Mark Infringement
Infringement occurs when another party uses a sign, logo or name that is identical or confusingly similar to your registered trade mark. That use can dilute your brand, divert customers and damage your reputation.
We assess whether infringement has taken place, gather evidence and take the right action: letters of claim, negotiated undertakings, or court proceedings for injunctions, damages or an account of profits, and the delivery up of infringing goods.
Passing Off
Even without a registered trade mark, businesses can rely on the common law of passing off to protect their goodwill where a competitor misrepresents its goods or services as connected with yours.
We advise on proving the three elements: goodwill, misrepresentation and damage. We act for both claimants and defendants, and help protect brand equity without unnecessary litigation costs.
Opposition, Invalidity & Revocation
Disputes often arise during registration. If a competitor files a mark too close to yours, you may need to oppose it at the UK Intellectual Property Office. If your own application is opposed, you must act quickly to defend it.
We also bring and defend invalidity actions, including bad-faith challenges, and revocation actions for marks that have not been used for five years. For EU trade marks, we work with EU-qualified representatives before the EUIPO.
Accused of Infringement
Receiving a cease and desist letter is not the same as being liable. We review the allegation, the strength of the other side's registration and the defences available to you, and respond in a way that protects your position.
Where a letter oversteps the mark, the Intellectual Property (Unjustified Threats) Act 2017 may give you a claim of your own.
Online Marketplaces & Domain Names
We remove counterfeit and copycat listings from marketplaces and social platforms using their intellectual property reporting procedures, and pursue domain names registered to trade on your brand, including through the Nominet dispute resolution service for .uk domains.
Settlement & Licensing
Not every trade mark dispute needs to end up in court. We draft and negotiate settlement agreements, coexistence arrangements and licences that let both parties move forward commercially.
Protecting a Real Estate Brand
Eddison White: Trade Mark Infringement by a Competing Estate Agent
Background Eddison White, a well-established estate agency in south-west London, discovered that a competitor, SW19, was using its trademarked logo and name online. The misuse was confusing consumers and damaging the brand's reputation.
Action Taken After a thorough trade mark analysis, we sent a pre-action protocol letter to the proposed defendants, setting out the legal consequences of continuing to use the disputed brand and demanding that the use stop immediately. SW19 stopped using the trade mark, and proceedings continued to recover damages for the harm already caused.
Outcome After a contested process, the infringing estate agent agreed to pay substantial legal costs and aggravated damages, including financial compensation for brand damage. Eddison White protected its reputation and put in place a stronger brand-monitoring system to prevent future infringements.
How a Trade Mark Dispute Runs
Five Stages
- 01 · AssessReview your rights, the other side's use and the evidence of confusion
- 02 · SecureCapture listings, websites, social posts and sales evidence before they change
- 03 · Letter of ClaimA pre-action letter drafted to comply with the unjustified threats rules
- 04 · NegotiateUndertakings, rebranding periods, coexistence or licence terms
- 05 · ProceedProceedings in the High Court or IPEC, or at the UKIPO, where needed
Choosing the Right Forum
The Intellectual Property Enterprise Court suits many brand disputes: damages are capped at £500,000 and recoverable costs at £60,000, which keeps risk predictable. Claims worth up to £10,000 can use its small claims track. Larger or urgent matters may need the High Court.
Oppositions, invalidity and revocation actions are heard by the UKIPO. We will advise which forum fits your objectives and budget.
Intellectual Property Law Since 1999
25+ Years' Experience
Internet, media and IP law since 1999
Published Author
A Practical Guide to Business, Law & the Internet (Kogan Page, 2002)
International Speaker
MBL Seminars speaker on IP and media law
SRA Regulated
Authorised and regulated by the Solicitors Regulation Authority (No. 827265)
Registration
A registered mark is far easier and cheaper to enforce than goodwill alone.
Other IP Disputes
Brand disputes often overlap with copyright in logos, artwork and content.
Trade Mark Dispute Questions
What counts as trade mark infringement in the UK?
Under section 10 of the Trade Marks Act 1994, infringement occurs where someone uses, in the course of trade and without consent, a sign that is identical or similar to a registered trade mark for identical or similar goods or services, and there is a likelihood of confusion. Marks with a reputation are also protected against use that takes unfair advantage of, or is detrimental to, their distinctive character or repute.
Can I take action if my trade mark is not registered?
Often, yes, through the law of passing off. You must show goodwill in your business, a misrepresentation by the other party that leads the public to believe its goods or services are connected with yours, and resulting damage, the three elements confirmed by the House of Lords in Reckitt & Colman v Borden [1990] (the Jif Lemon case). Passing off is usually harder and more expensive to prove than infringement of a registered mark.
What should I do if I receive a cease and desist letter?
Do not ignore it, and do not reply in haste. Preserve your records, stop any use you are unsure about while you take advice, and have the claim assessed. Many allegations can be answered or narrowed, and an overstated letter may itself be an unjustified threat under the Intellectual Property (Unjustified Threats) Act 2017.
What is an unjustified threat?
Threatening someone with infringement proceedings can give the recipient a claim against the person making the threat, unless the threat is permitted, for example where it is made to a manufacturer or importer, or is a permitted communication. The rules are in the Intellectual Property (Unjustified Threats) Act 2017, so any letter of claim must be carefully drafted.
How long do I have to oppose a UK trade mark application?
An opposition at the UK Intellectual Property Office must be filed within two months of the application being published. The period can be extended to three months by filing a notice of threatened opposition (Form TM7A) within the first two months.
Can a registered trade mark be cancelled?
Yes. A registration can be declared invalid, for example where it conflicts with an earlier right or was applied for in bad faith. In SkyKick v Sky [2024] UKSC 36, the Supreme Court confirmed that applying for goods or services with no intention to use the mark for them can amount to bad faith. A mark can also be revoked if it has not been genuinely used for a continuous period of five years.
Which court hears trade mark disputes?
Most claims are brought in the High Court or the Intellectual Property Enterprise Court (IPEC). IPEC suits smaller and mid-value disputes: damages are capped at £500,000 and recoverable costs at £60,000. Claims worth up to £10,000 can use the IPEC small claims track. Claims for infringement must usually be brought within six years.
Can trade mark disputes be settled without court?
Most are. Disputes are commonly resolved through undertakings, rebranding periods, coexistence agreements or licences. We will advise on whether settlement or proceedings will best protect your brand, and on the realistic costs and risks of each route.
Need Help with a Trademark Dispute?
Contact us for specialist advice and representation, or use the form below.
- Your registration numbers, or when you started using the brand
- Screenshots, links and examples of the other party's use
- Any evidence of customers being confused
- Any letters already sent or received, with dates
Telephone: +44 (0)20 7305 7491
Email: peter@pailsolicitors.co.uk
23 Berkeley Square, Mayfair, London W1J 6HE
Scope and fees are agreed in advance before any work begins.
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