Trade Mark Infringement: Injunctions and Account of Profits
TL;DR
Trade mark infringement remedies are powerful tools for brand owners. Injunctions stop unlawful use quickly, while account of profits ensures infringers do not profit from their actions. Choosing the right remedy depends on your goals, evidence, and commercial strategy, and early legal advice is vital to success.
Introduction
Trade marks are among a company’s most valuable assets. They distinguish products and services, embody reputation, and create consumer trust. When someone uses a mark that is identical or confusingly similar without permission, it can damage brand value, mislead customers, and erode commercial advantage. UK trade mark law offers several powerful remedies to deal with such situations, two of the most important being injunctions and account of profits.
These remedies are not just legal tools; they are strategic levers. Injunctions stop infringing activity quickly, while account of profits deprives infringers of any financial benefit gained through unlawful use. Together, they form the cornerstone of effective trademark enforcement and brand protection.
Understanding Trade Mark Infringement under UK Law
Under the Trade Marks Act 1994, trade mark infringement occurs when a third party, without the owner’s consent:
- Uses an identical sign for identical goods or services.
- Uses a similar sign for identical or similar goods or services, leading to a likelihood of confusion among consumers.
- Takes unfair advantage of, or causes detriment to, a trade mark with a reputation.
Common examples include counterfeiting, unauthorised use of a registered trade mark on packaging or advertising, and adopting a confusingly similar brand name in the same commercial sector. Even unregistered rights can be protected under the tort of passing off, which relies on demonstrating goodwill, misrepresentation, and damage.
For businesses, enforcing trade mark rights is essential. Failure to act promptly can weaken brand distinctiveness, limit future enforcement, and even risk dilution of the mark.
Get to know more: Trademark Infringement: Protect Your Brand & Take Legal Action
Legal Remedies for Trade Mark Infringement
A successful infringement claim can result in several remedies, each addressing different aspects of the harm caused. These include:
- Injunctions – orders that stop infringing activities immediately.
- Damages – compensation for losses suffered by the trade mark owner.
- Account of profits – recovery of profits made by the infringer.
- Delivery up or destruction – removal of infringing goods from circulation.
- Declarations – formal statements confirming infringement has occurred.
While damages aim to compensate the trade mark owner, injunctions and account of profits focus on stopping the infringement and reversing any unjust enrichment. They are often the most powerful remedies from a commercial and strategic perspective.
Injunctions Explained: Stopping Ongoing Infringement
An injunction is a court order that prohibits the infringer from continuing their unlawful use of a trade mark. It can apply to various acts, including manufacturing, selling, advertising, or importing goods that breach trade mark rights.
There are two main types of injunctions in trade mark disputes:
- Interim injunctions: Granted before the case is decided, usually on an urgent basis, to prevent ongoing damage.
- Final injunctions: Granted after a successful trial, permanently restraining the infringer from continuing the unlawful activity.
To obtain an interim injunction, courts apply the American Cyanamid test, which considers:
- Whether there is a serious issue to be tried.
- Whether damages would be an adequate remedy.
- Where the balance of convenience lies.
The applicant must also provide a cross-undertaking in damages, agreeing to compensate the defendant if the injunction was wrongly granted.
Strategic Use of Injunctions in Trade Mark Disputes
Injunctions are a critical enforcement tool in trade mark litigation because they provide immediate relief. Without one, infringing activity might continue for months or years, causing irreparable harm to the brand’s reputation and market position.
Strategically, interim injunctions are especially valuable when:
- The infringement is ongoing and causing substantial commercial harm.
- The brand risks significant consumer confusion or dilution.
- Urgent action is needed before a product launch or major campaign.
Securing an injunction can also shift the balance of negotiations. Once the court orders a halt to the infringement, defendants are more likely to seek settlement rather than risk a full trial and potential financial liability.
Account of Profits: Stripping the Infringer’s Gains
While injunctions stop future infringement, account of profits deals with the past. It is a restitutionary remedy designed to prevent infringers from retaining any profits earned from unlawful use of a trade mark.
Unlike damages, which compensate the claimant for their loss, account of profits focuses on the infringer’s gain. The underlying principle is that no one should profit from wrongdoing.
To obtain this remedy, the claimant must elect between damages and account of profits — they cannot claim both. Once chosen, the court will require the defendant to provide detailed financial accounts showing revenue and profits derived from the infringing activity.
The calculation typically considers:
- Gross revenue generated from infringing goods or services.
- Direct costs and expenses that can be legitimately deducted.
- Net profit attributable to the infringement.
Courts are careful to exclude unrelated profits, focusing only on gains directly linked to the misuse of the trade mark.
Damages vs Account of Profits: Choosing the Right Remedy
Although both remedies aim to address infringement, they operate differently:
| Feature | Damages | Account of Profits |
| Purpose | Compensate the trade mark owner for losses | Strip the infringer of profits |
| Focus | Claimant’s loss | Defendant’s gain |
| Calculation | Lost sales, reduced licensing revenue, brand damage | Net profit earned from infringement |
| Risk | May be difficult to prove loss | Defendant’s profit may be lower than claimant’s loss |
| Strategic use | Useful when loss is clear and quantifiable | Effective when infringement generated substantial profit |
Choosing between them requires a careful assessment of the commercial objectives and available evidence. For example, a luxury goods brand may prefer account of profits if counterfeit sales were high, while a business that lost significant revenue might favour damages.
Combining Remedies with Other Enforcement Tools
In addition to injunctions and account of profits, trade mark owners often seek complementary remedies to maximise the impact of litigation. These include:
- Delivery up or destruction: Ordering the infringer to surrender or destroy infringing goods.
- Public declarations: Official statements confirming the infringement, useful for brand reputation and deterrence.
- Costs orders: Reimbursement of legal costs by the losing party.
Together, these remedies ensure comprehensive enforcement, halting future infringement, reversing unlawful gains, and deterring future violations.
Role of Specialist IP Lawyers
Trade mark infringement claims involve complex legal, procedural, and commercial considerations. The timing of an injunction application, the choice between damages and account of profits, and the evidence required to support each remedy all demand careful planning.
Specialist intellectual property solicitors provide crucial support by:
- Assessing the strength of the claim and identifying the most effective remedies.
- Gathering and preserving evidence of infringement and financial gain.
- Drafting urgent injunction applications and handling court procedures.
- Advising on settlement strategy and enforcement of court orders.
Early legal advice can significantly strengthen a case and ensure that enforcement actions align with wider business goals, such as brand protection, market positioning, and revenue recovery.
You should know about: Passing Off Claims: When Businesses Copy Your Brand
Let Our Experts Help You
Trade mark infringement can harm your brand, divert customers, and erode years of investment in reputation. Acting quickly is essential and powerful remedies like injunctions and account of profits are key to stopping the damage and recovering what’s rightfully yours.
At Civil Litigation Lawyers, we help businesses enforce their trade mark rights, secure urgent injunctions, and pursue financial remedies with precision. Contact us today to discuss your case and get tailored legal advice on protecting your brand and maximising the outcome of your infringement claim.
