How to Protect Your Trademark From Infringement

Most people assume that once they’ve registered their trademark, paid and secured the name, logo or other ‘sign’ for the initial 10-year period, that the job is done.  This however, is just the beginning as there’s more involved when it comes to truly protecting your trademark during the life time of it’s registration.  To make sure you maintain control over your trademark and that nobody else can use it or violate your intellectual property (IP), you must follow a number of rules.

Once your trademark has been on the register for at least five years, it may become vulnerable to removal application if it’s not been used during the three years leading up to the filing of such an application (particularly the three years ending one month before the filing of a removal application).  What that means is, another company or person can apply to have the registration of your trademark removed if they think you have not been using your trademark in the relevant period for the goods/services claimed in your registration. In this instance, you are forced to choose to oppose that removal request, or may have to reapply for your trademark, at the risk of losing it all together if someone else gets in before you. The common saying in our industry is “use it or lose it”.

Policing your IP rights is your responsibility, not IP Australia’s (the governing body of trademarks) so it’s important to stay on top of things to avoid the complexities of having someone using your trademark or something similar.

Avoiding Trademark Infringements

In order to ensure the commercial worth and legal validity of your trademark, you need to keep a look out for anyone trying to use it without your permission.

Trademark infringements can be very complicated, so if you suspect somebody is using your trademark, rather than dealing with it personally, it’s important to seek professional advice.

It’s very tempting in the heat of the moment to want to pen an angry ‘cease and desist’ letter to the person in question, but without understanding the complexities of trademark law, you could be making a grave mistake.  What looks like an infringement to the business operator and trademark owner may not be the situation at all, so to avoid the unnecessary stress of having the issue work against you – always seek out a professional opinion first.

It’s important as a business owner not to become overzealous in the effort to protect your trademark. The effort and passion that goes into building your brand should not blind you from the realities of your actual rights when it comes to your trademark. Despite the amount of the time, effort and cost involved in the trademark registration process, your legal rights are still limited. Understanding these limits can help you avoid enforcement and protection complications.

It’s a great idea to have a trademark professional look over your situation in matters of a possible trademark infringement. As an impartial and qualified party, they can not only assess your situation to decide if an infringement has actually occurred, but also offer some much needed perspective and advice on the how best to proceed.

A trademark professional will:

  • Look at what you suspect is an infringement of your trademark and determine whether there is merit to your claim – according to the law. Trademark legislation is both delicate and complex, with a number of factors often determining if an infringement has occurred.  For instance, International trademark infringements have increased considerably with the wide-spread use of the internet thus making the global business world a lot smaller. If you suspect someone outside of Australia is using your trademark it’s vital to seek qualified advice, as use outside of Australia will not amount to infringement of your Australian registered trademark. Other areas may then apply to help stop an overseas user but this is why it’s very important to get sound advice first.
  • Discover which party was the first to use the trademark and the extent of the usage. For possible infringement within Australia, a trademark attorney will investigate the precise timing of usage to see if it occurred before or within the timeframe of your trademark registration and your own use. If another party is truly a prior user, there may not be a trademark infringement.
  • Find out the category of goods and services the potential infringement falls under. Because of the way in which IP Australia compartmentalises the various services and products for businesses, from clothing and real estate, to telecommunications, musical instruments and dietary supplements, what initially looks like an infringement may be a non-issue as it falls under an entirely different trademark category. For instance, someone using the same trademark for their telecommunications company as your dietary supplement may not qualify as an infringement. Typically we look to see whether the goods/services are either the same or related to those captured in your registration – such that use by the other person on their activities would be confused with your own.

The Procedure for Fighting Infringements

Should a review of your concerns find there is merit to your claim of infringement, your trademarks attorney will usually begin by writing an appropriate letter of demand and sending it to the alleged infringer.   This letter will state in no uncertain terms, their client’s rights and the manner in which it’s believed these rights have been breached by the infringer, along with what is expected of the infringer moving forward.  It may seem logical for the trademark owner to just go straight to court however, this is not usually the first step for a number of reasons.

There is some expectation that parties involved in a dispute will act on and take genuine steps to resolve the issue as quickly as possible.  Contrary to popular belief, a court case will not necessarily speed up the process, but only serve to be an expensive and lengthy procedure.  Rather than wasting the court’s time both parties should always aim to resolve their trademark issues outside of courtroom.  Although it’s easy to lose one’s head in the heat of the moment, it’s vital to maintain a professional and commercially sensible view point throughout the entire process.  Time and time again we have seen business clients stress-out over what turn out to be somewhat easily resolved trademark infringement situations.

There is often, although not always, scope for two sides to come to a sensible and reasonable agreement to resolve these issues, which is always our objective where suitable. Taking this approach may save thousands of dollars (in some cases, tens of thousands of dollars) and see matters quickly at an end.

Our top tips here are to monitor the marketplace on a regular basis for any suspected unauthorised use of your trademark and seek advice as soon as you suspect there may be a breach of your rights. Acting quickly is often key to both resolving matters amicably, as well as – in the unlikely event of needing to commence legal proceedings – help demonstrate your diligence and efforts in both protecting your rights and attempting to take genuine steps to achieve resolution before commencing the proceedings.

Unfortunately there are times where it becomes necessary to consider further legal action against alleged infringement. At Mark My Words we work closely with several IP litigation specialists, as well as IP Barristers, in case a referral is required.

Taking Care of Your Trademark

When it comes to your trademark and other intellectual property it’s important not to become too emotionally attached to what are technically business assets. We appreciate our clients and business owners often view their brands as their babies, but, ultimately they should not be treated with that level of emotion.  Keeping this in mind will help you maintain a professional and calm outlook should any potential disputes arise. Often, issues end up being simple misunderstandings on the part of the infringing person or persons and they are happy (and apologetic) to comply with any requests made by the trademark owner.  With the aid of a professional service these can be dealt with swiftly and with minimum distress and minimal cost.

This however, does not negate the fact that you still have certain rights and obligations. You’ve invested a lot of effort and money into your brand and the registration of your trademark and intellectual property, so you’re entitled to a level of protection to prevent people from using your trademarks – given the right circumstances.

Those rights come with certain obligations for you to be proactive in the protection of your trademark and be on the look out for possible infringers.  As soon as you suspect the possibility of a trademark infringement, notify us so we can review and advise accordingly.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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