I've recently been in correspondence with a trade mark owner who has been trying to protect her trade mark against infringement by a far larger company. Since she has limited resources for civil litigation, she has been trying another route -- making complaints to local Trading Standards offices in the hope that they will leap into action in order to remove infringing goods from the shops.I understand that, while it is possible to secure some success in this manner, it is by no means easy. A complainant has to be able to persuade that there is indeed a valid trade mark and that it is being infringed, and it can be hard to keep the attention of TS for long enough to get them to understand what is required of them, since they are generally under-resourced themselves and they are much more interested in things like tainted foods, stolen goods, actual counterfeits and so on, and don't particularly want to spend their time doing what they feel is the job of the civil law.
Any comments, suggestions, experiences?
A long time ago a client of mine was teh victim of a big company persuading trading standards to prosecute for trade mark infringement. My client had some pretty good reasons why he wasn't infringing, especially under section 11(2)(b) and (c). You can probably guess how interested trading standards were in that!
ReplyDeleteBut as a way for the small business to bite back, I think I approve.
Members of the Group have been discussing the UK IPO booklet called the Supply Chain Toolkit launched back in January 2009 but this edition is dated June 2010. The booklet is mainly helpful about IPCrime and anticounterfeiting issues. It does not make at all clear where the boundary lies between the brand owners responsibility to look after himself and ares where the State takes an interest. For example it discusses patents but fails to say there are no material IPCrime offences that relate to patents.
ReplyDeleteStrangely the state takes a much greater interest in enforcing copyright than it does other IP.
As a rule of thumb Trading Standards will take an interest if the consumer is likely to suffer but are unlikely to want to spend public funds if its only the IP owner that suffers (unless he is a famous musician)
Over the years, I have been involved in a number of actions using trading standards, most recently in a fairly large scale raid on business and private premises. My experience suggests that their enthusiasm for this type of action and the resources they are willing to expend, depends heavily on the authority involved and varies significantly from region to region. Some are very keen on dealing with ip matters. In my view, an important factor is making it very clear what criminal offences have been committed (ie make it easy for them). Often the action can be very effective and saves a considerable amount of cost. The disadvantage of course is that the client loses control of the procedure and particularly the timing of any action.
ReplyDeleteAny chance of using POCA regarding the profits made from s92 TMA offences?
ReplyDelete