Infringement of Trademark
Using a company’s trademark can cause you a lot of trouble. It is understandable that if you are selling spare parts from an engine manufacturer or OEM, putting their logo in your marketing materials might help your sales. But, as intellectual property, trademarks are also protected, and their owners enjoy some rights.
We do our best to keep our members updated about relevant issues in the industry. The best way to do that is to take real-life examples and use them to spread awareness.
A trademark is a recognisable sign, design, or expression, used to identify products or services from a particular source. This also means that it distinguishes these products or services from those of other sources. The trademark can be printed on a package, label, advertisement or on the product itself. Essentially, a trademark acts as a badge of origin.
In most countries, trademarks have to be registered to receive protection, although that may not always be necessary. In Germany, for example, an unregistered trademark that takes up a large enough portion of the market might receive protection nonetheless.
In most cases, a trademark has to be maintained, otherwise, the protection might be lost. This means that it has to be used frequently enough. If so, then the trademark protection will last indefinitely.
In short, the phrase “suitable for” can be a crucial tool for minimising the risk of trademark infringements. If you are not an official dealer of the OEM or engine builder, then you might consider adding it to your marketing materials. For example, instead of mentioning “We sell parts for X engine model”, you could use “We sell parts suitable for X engine model”. That way, there is less risk that the customer would be confused as to the origin of the parts you are selling. It also means that there is less risk of you being accused of using the trademark in a trademark-like manner.
At the SMM 2012, one of our members had not used the words “suitable for” in their marketing materials when referring to the engine models which they offered parts. The lawyers of an engine builder noticed this. The issue was that the trademarks in the marketing materials were considered to be used in a “trademark-like” manner. Our member had not added the phrase “suitable for”. Unfortunately, in Germany at the time, such an infringement leads to a penalty even if it was unintentional. In the end, our member agreed to pay a relatively low penalty to not infringe the trademark again.
Our member was quick to change all marketing materials accordingly. However, in preparation for SMM 2014, an employee found old marketing materials and decided to use them alongside the new compliant ones. The employee intended to save money.
During the exhibition, the lawyers of the engine builder checked our member’s stand in the morning and eventually found the old flyers. Despite the error being unintentional, the legal team recognised that there was an infringement of trademark. In the end, the lawyers imposed a penalty of €20 000 – €5000 for each of the three trademarks plus the legal fees. Luckily, our member was able to negotiate a reduction of the penalty.
The lessons from this are fairly clear:
- Always consider checking your marketing materials for possible infringements of trademark, preferably by more than one person;
- It might be best to destroy all old copies of marketing materials and update your website frequently if you catch anything.
After this experience, we were quick to send our members a note about the lessons learned. Nowadays, our members can take advantage of our guidance when they have doubts about their flyers, brochures, website, and materials. That is one of the benefits of cooperating as independent companies in an industry, which is sometimes difficult to navigate.