Have you received a trademark infringement notice informing you that your business has infringed on another’s right to trademark? If so, then this article is for you.
Receiving a trademark infringement notice or demand can be a daunting experience for any business owner. In the Philippines, receiving such notice means that another entity believes your business name, logo, or mark is too similar to theirs, potentially causing customer confusion or unauthorized association with their brand. Ignoring the notice can lead to serious legal consequences, including litigation costs or an injunction against using your mark.
Initial Steps After Receiving a Trademark Infringement Notice
It is understandable that your first reaction to receiving an infringement notice is panic. However, this would be impractical as you have a legal recourse to follow through. Here are the initial steps after receiving such notice:
1. Carefully review the notice.
It is noteworthy to mention that any natural or juridical person who believes that he, she or it would be damaged by the registration of a mark may file a written notice of opposition to a trademark application.1 Once you have received a notice to answer to the opposition, you must carefully review the notice and check the information indicated in the notice.
2. Verify the notice’s validity.
The opposition notice must indicate the names and addresses of the opposer and the assigned application number and the filing date of the trademark application opposed subject to infringement. It should be in writing and verified and shell specify the grounds on which it is based.2 If the notice of opposition is substantially infirm, it follows that the notice to answer is likewise invalid.
Legal Options to a Trademark Infringement Notice
1. Consult a trademark lawyer.
If you receive a trademark infringement notice, one of the most important steps you can take is to consult a trademark lawyer. Trademark law can be complex, and a qualified lawyer can help you navigate the specifics of the notice, assess the validity of the claim, and determine the best course of action to protect your business. They can advise on potential defenses, such as fair use or distinctions in goods or services, and help you respond appropriately—whether through settlement, negotiation, or disputing the claim.
2. Know the actions available against you.
It is important to know the actions against you as various remedies correspond to whether the trademark is registered or now. Under the Intellectual Proper Code (IP Code), when a trademark is registered, the remedies are:
• civil or administrative case for infringement or unfair competition;
• criminal case for infringement or unfair competition;
• search and seizure;
• injunction; and
• recovery of damages.
If the trademark is not registered, then you cannot file an action for trademark infringement. The following are the remedies available to you:
• civil or administrative case for unfair competition;
• criminal case for unfair competition;
• search and seizure;
• injunction
• recovery of damages.
3. Know the defences against infringement.
You are not entirely powerless when you receive an infringement notice. Seek legal guidance from a trademark lawyer to help you navigate the defences against infringement that you can take into account. Some of the defences that you may consider are:
• Invalidity of the trademark registration
• Absence of concussion
• Prior use in good faith by the defendant
Conclusion
Understanding how to respond effectively to an infringement notice is crucial to protecting your business. Consulting a trademark lawyer, for example, ensures that you understand the claim, explore all possible defenses, and respond in a way that protects your brand. Legal guidance can help you make informed decisions even when confronted with a notice to answer to an opposition. By addressing the notice proactively and seeking expert advice, you’re better positioned to protect your business’s reputation and maintain its growth trajectory.
To know more about trademark infringement notice, book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 Intellectual Property Office Order No. 99, S. 2011, June 29, 2011; An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes, Republic Act No. 8293, §134 (January 1, 1998).
2 Id.
