If you think that someone may be infringing on your trademark, then you should consult with your legal advisor as to the best course of action.Quite often, a ‘cease-and-desist’ letter will be sufficient. This is a letter, usually from a lawyer, that advises the infringing party to cease using the trademark immediately. If this does not achieve the desired result, then you may have to take further action, which could include a legal action for trademark infringement. Generally, it is far better to catch this type of problem early on, when the cost of changing the mark for the infringing party will be lower. If they have already invested a considerable sum in developing and marketing the infringing trademark they are more likely to put up more resistance, which can lead to an expensive fight.

If you think that your trademark may be infringed by a pending registration application, it is important to file an Opposition in a timely fashion. In Canada, this Opposition period is open for 2 months and it is the best opportunity you are likely to have to prevent the registration of a conflicting mark. Please note that since the trademark registry is a public record, it is assumed that you are aware of it and of applications being made for trademark registration.

Infringement of Someone Else’s Trademark

If someone thinks you are infringing on their trademark, they will usually start by sending you a ‘cease and desist’ letter. This type of letter asks you, often in quite forceful terms, to stop using your trademark immediately, and threatens you with dire consequences if you don’t.

The first issue is usually whether in fact there is an infringement. Many businesses, especially the very large ones, will try to protect their trademarks quite aggressively, asserting that there has been an infringement when in fact it’s unlikely that there really has been. In this way, they hope to scare off other potential users of similar marks. If you take no action, you may not hear from them again. In other cases, they will pursue the matter hoping that you will back off in the face of mounting legal expenses. They are frequently successful in this tactic.

Sometimes, the entire matter can be sorted out by negotiation and agreement. This often involves undertakings not to engage in certain activities or to stay out of certain areas.

If you do receive such a letter, you should consult with an experienced trademark lawyer to see what your actual rights are in the circumstance.