Failure to enforce your trade mark

Failure to take action against a trade mark infringement may bar action at later date.

One of the defences to trade mark infringement under the Trade Mark Act 1994 is where a trade mark owner has knowledge of the use of a potentially conflicting mark and has failed to take action for a period of more than five years after discovering the same. In such cases the trade mark owner will be taken to have effectively given up his right to challenge this use.

Consequently, when a trade mark owner becomes aware of a potentially conflicting mark he must take action within 5 years, or he will be taken to have impliedly consented to the use of this other mark. Such consent will be viewed as defeating any right of action he may have had to stop the use of the later mark, unless he can show bad faith on the part of the other party.

However, all is not lost as this is not in itself fatal to the owner’s trade mark registration. This loss of rights will be confined to the case at hand. The trade mark registration itself is not affected and as such remains valid. Therefore the owner will be protected against any
challenge which the user of the subsequent trade mark may attempt to raise.

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