Someone Is Using My Trade Mark On Their Website, What Shall I Do?

If you’ve come across someone using your protected name on their website, the first thing you should do is give yourself a pat on the back.

Not only have you protected your valuable asset with legally enforceable rights by registering your trade mark, you’ve also been vigilant in monitoring the marketplace for its unauthorised use. Both of these are crucial steps in safeguarding your asset and proactively safeguarding the future of your business.

What Should I Do if I Think Someone Else Is Using My Trade Mark Illegally?

Once you’ve congratulated yourself for doing the right thing, it’s time to take action.

Because trade mark law is complex and the legal process can be long, complicated and costly, it’s recommended that you consult a trade mark law specialist as soon as possible. At Mark My Words Trademark Services, we strive to keep our attorney services affordable, especially in support of smaller businesses – and our aim is always to find the best solutions without incurring unnecessary expenses or delays.

I’ve Heard the Term ‘Trade Mark Opposition’. What Is It?

As the owner of a trade mark, it is recommended that you familiarise yourself with the concept of trade mark opposition and how it differs from trade mark infringement.

A trade mark opposition is a formal process through IP Australia during which a trader lodges an opposition against another trader’s trade mark being registered.

There are numerous grounds for opposing a trade mark. Here are some of the reasons which could motivate a person to lodge an opposition:

They believe the trade mark is the same, or very similar to their brand
They think use of that trade mark will confuse or mislead customers
They believe use of the trade mark will damage the reputation of their trade mark

It is only possible to lodge an opposition once a trade mark has been accepted for registration by IP Australia and there are strict timeframes involved.

What Is Trade Mark Infringement?

Opposition differs from infringement action in that opposition is handled through IP Australia whereas infringement is dealt with through the court system. Allegations of infringement may arise during an opposition hearing, but the two are considered to be separate actions.

If another trader is using your registered trade mark on their website without official permission, this may amount to trade mark infringement.

What Steps Should I Take if I See My Trade Mark Name Being Used by Someone Else?

It is always in your best interest to seek expert advice upfront in order to determine whether your rights have been infringed. As mentioned earlier, the law is complex and court proceedings can be time-consuming and costly, so professional advice from an intellectual property expert on the best process for effective resolution is highly recommended.

Bear in mind that what may look like a breach of your rights may not in fact be the case under the law, so before you take any impulsive action, you need to be 100% sure that you are doing the right thing.

There will be times where what appears to be infringement simply isn’t. Some things to check include:

the infringer is the same country in which your trade mark is registered
they are using the trade mark for the same type of goods or services for which your trade mark has been registered
whether they have a concurrent trade mark registration to yours
the date on which they commenced use of the trade mark

In many instances, a formal ‘cease and desist’ letter sent to the potential infringer is sufficient to stop the infringement. A trade marks attorney can send this letter to the trader on your behalf.

Getting a professional involved will mean that you don’t waste time or money pursuing something that never had any merit in the first place. Our friendly team of experienced professionals at Mark My Words Trade Mark Services can help you achieve the best outcomes with the minimum of stress and we welcome you to get in touch through our website Mark My Words Trademark Services or call us on 03 8288 1432.

Some other things to consider include using trade marks in Google Ads and protecting your intellectual property.

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.