Remedies for trade mark infringement

The following IP practice note provides comprehensive and up to date legal information covering:

  • Remedies for trade mark infringement
  • Brexit
  • Types of remedy
  • Election between damages and an account of profits
  • Damages
  • Account of profits
  • Inquiry
  • Statutory remedies: erasure, delivery up or destruction of infringing goods
  • Injunction
  • Dissemination and publication of judgment
  • More...

Remedies for trade mark infringement

This Practice Note outlines the civil remedies available in the UK to the proprietor of a UK trade mark, a comparable trade mark (EU) or a comparable trade mark (IR) for trade mark infringement. For more information about trade mark infringement generally, see Practice Note: Trade mark infringement.

Criminal offences and penalties are considered separately in Practice Note: Trade mark offences.

Brexit

The most significant impact of Brexit on trade marks is that Regulation (EU) 2017/1001 (the EU Trade Mark Regulation) was repealed at 11.00 pm on 31 December 2020 (IP completion day), meaning that EU trade marks (EUTMs) are no longer protected in the UK. This means it is no longer possible to assert EUTMs in proceedings before UK courts.

Holders of EUTMs which were registered immediately before IP completion day automatically became the holder of a comparable trade mark registration in the UK. These UK rights retained the filing dates recorded against the corresponding EUTMs and also inherited any priority and/or seniority dates. They are fully independent UK trade marks which can be challenged, assigned, licensed or renewed separately from the original EUTM and therefore can be protected in the same way as any other UK trade mark. These rights are known as a comparable trade mark (EU) or, in the case of a comparable mark derived from an international registration designating

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