The laws operating in Australia basically state that a person will be considered to have infringed a trade mark if they use a ‘sign’ (without registration or permission) that’s the same, or confusingly similar to a sign that someone has registered as a trade mark. There are specific circumstances in which it will be found that trade mark infringement has not occurred. For example, if the person has used the sign for longer than the registered person.
A person who has registered a trade mark is entitled to take action against another person for trade mark infringement where appropriate. Trade Mark Infringement is complicated and there is not always a black and white answer as to whether a trade mark has actually been infringed. If you have received a letter claiming that you are infringing the rights of another person’s, please contact us for advice. As your Trade Marks Attorneys, we will review any letter you have received and provide preliminary advice on your situation at no charge. You may then choose to engage our services to respond to the letter on your behalf.
Seek the advice of a Trade Marks Attorney before issuing a letter of demand. Doing so prematurely could see you in trouble for making groundless threats.
If you have registered a trade mark and believe that someone else is infringing your rights, contact us now to discuss the options available for you. It’s important to note that issuing a letter or similar demands without the right to do so could be viewed as the making of groundless threats, which is prohibited under the Trade Marks Act 1995. If you make such a groundless threat concerning trade mark infringement, the person receiving the threat may be able to take action against you, so, it’s crucial to ensure you are within your rights before threatening legal action against others. The first consultation with our Trade Marks Attorneys will be free of cost and of obligation. This will allow us to determine whether it is appropriate to issue a letter of demand on another person to cease and desist their use of the similar name or other sign.
For a general overview on this topic, this article on the basics of trade mark infringement is helpful, otherwise read on for some more detailed insights.
Circumstances where trade mark infringements can happen
As mentioned, trade mark infringement occurs when the exclusive legal rights attached to a registered trade mark are violated without permission from the owner of said trade mark. A mark or sign can include a letter, a word, name, number, aspect of packaging, slogan, shape, colour, sound or smell – or a combination of any of these.
There are some instances where infringements can occur:
- When someone uses a sign which is substantially identical or deceptively similar to a registered trade mark in relation to the same nominated goods or services of the registered trade mark. Consumer deception or confusion about the origin of the goods or services is highly likely.
- When someone uses a sign which is substantially identical or deceptively similar to a registered trade mark in relation to goods or services that are closely related to those of the registered trade mark. Consumers may be confused and assume that the goods come from the same source.
- When someone uses a ‘well-known’ trade mark
Infringements can only happen in the course of trade. In other words, the sign has to be used in a commercial context for any infringement to occur. Further, the sign has to be used as a trade mark – meaning as the distinctive element/sign being used to distinguish the relevant product or service from others.
At face value, these circumstances may seem clear cut and consequently it would be easy to identify infringements. However, the reality is that trade mark infringement is complex and there is often much more to it than meets the eye.
Perception and reality are two very different things and each situation should be examined on a standalone basis. That’s why we always urge trade mark owners to seek expert advice before jumping to conclusions.
Mark My Words Trademark Services has advised many clients who have legal grounds for pursuing action against transgressors, but you need to be aware that if you make unsubstantiated legal threats against someone, you may face reciprocal action which can have significant legal and financial consequences. Our blog on ‘Understanding Trade Mark Infringements and Disputes in Australia’ provides more details on this issue, plus it covers the wider spectrum of trade mark breaches.
My trade mark is being infringed…what do I do?
It’s vital to act promptly but also to follow carefully considered procedures if you suspect your trade mark rights are being infringed. This will help limit any damage to your reputation and your bottom-line as well as avoid the risk of you making false accusations.
If you believe infringement is happening, you need to gather strong evidence to support your claims. Things like visual proof (photos, videos, screenshots, physical examples), details of where the mark is being used, evidence of how your business has been or will be harmed as a result of the alleged infringement as well as proof of the sources of your evidence will all be crucial elements in supporting your case. Of course, evidence of your registered rights will be necessary.
A trade marks attorney will be able to review your situation objectively to ascertain whether or not there’s any validity to your claim.
If there are grounds for legal action, they will then likely advise you to write a Cease and Desist Letter. This letter will set out your position and give the other party the opportunity to right the wrong.
Important points about a Cease and Desist Letter
Points to cover in a Cease and Desist letter include:
- An outline of your exclusive rights as a trade mark owner
- Specifics with regard to the alleged infringement
- Recommended actions that the infringer should take (for example, changing their business name or brand name/identity) in order to stop the infringement
- Legal steps you intend taking if the transgression persists
Should this letter not result in the infringer taking the appropriate action, you can take further legal action by going to mediation or by filing an infringement claim.
If the case goes to court and you are successful, the court may order:
- An injunction to stop the infringing activity
- Damages or account of profits (and, in some cases, additional damages)
- A destruction order for the illegal goods
- Costs
Should your case require this sort of action, appropriate litigation support is required and our office can refer you to an IP Litigation firm is/as required. Court proceedings can be time-consuming and costly, so it is always recommended to seek ways to resolve the matter through alternative dispute resolution processes before instituting legal action. Mark My Works has a strong focus on achieving settlements and resolutions before litigation is necessary.
Key takeaways
- Register your trade marks to protect your IP and give yourself the best chance of avoiding infringements
- Act quickly if you suspect any infringement
- Seek professional advice before making any legal threats against a third party
- Monitor your operating environment regularly
- Take proactive steps to avoid infringing on another party’s trade mark rights
A last word on trade mark infringement
A trade mark can be very personal. It can represent countless hours of hard work, risk and sacrifice – and it can also represent substantial investment and commercial value. However, it’s crucial not to let an emotional attachment to your trade mark affect your responses in the event of a suspected transgression. Swift yet informed action is your best approach.
At Mark My Words Trademark Services, we understand the importance of securing and protecting your IP through trade mark registration and we can help if you believe your rights are being infringed.
Some FAQs on trade mark infringement in Australia
The following questions may help you clarify your situation if you feel your rights are being infringed.
