PLEASE NOTE: Information in this article is correct at the time of publication, please contact DFA Law for current advice on older articles.
In a recent case, firms which used trade marks to which they were not entitled felt the wrath of the court.
The case concerned the National Guild of Removers & Storers (NGRS), a trade association for businesses in the removal and storage industry. NGRS owns various trade marks, which members may print on their stationery and include in their advertisements. Members pay an annual subscription and are required to follow a code of practice and to participate in the association’s ombudsman scheme. Any members that leave the association are obliged to remove the trade marks from their advertisements and stationery. In cases where an advertisement including any of the trademarks is in circulation in a trade directory, such as Yellow Pages, the departing member is required to pay a licence fee of £100 per week for as long as the advertisement remains in use. Any former member using the trade marks after the expiry of advertisements appearing in public directories must pay NGRS £200 per week.
The four defendants in the case had used trade marks owned by NGRS when they were not entitled to do so. One had never been a member of the association. The other defendants were former members who continued to use the marks after they had ceased to belong to the association. Each of these four businesses was ruled to have infringed the association’s trade marks and passed itself off as a member of NGRS. An inquiry was ordered against each of the defendants with directions for disclosure and service of evidence. None of the defendants complied with the orders and none was present or represented at the hearings.
The judgment of the court was that in any case of trade mark infringement or passing off, damages should be paid regardless of whether or not there was a ‘lost sale’. In the cases of the three former members of the association, damages were assessed on the basis of the departing member fees. In the case of the non-member, damages were assessed as if they had belonged and had then ceased to be a member. In each of the cases, costs were assessed and awarded against the defendants.
“Trade marks, whether belonging to a trade association or any other organisation, are valuable intellectual property and should only be used with permission and within the terms set out in an appropriate agreement,” says Clare Towers. If you are concerned about misuse of your data or intellectual property assets, contact us for advice.