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Navigating trade mark infringement and trade mark enforcement in Australia

Trade mark enforcement in Australia

The main benefit of owning a trade mark registration is that it gives you the exclusive right to use the trademark. 

This enables you to stop other people from infringing your trade mark. 

Infringement occurs when someone (other than an authorised user) uses a trade mark that is substantially identical or deceptively similar to your mark, in relation to goods or services which are similar to those for which your mark is registered.

If you become aware of someone infringing your mark, it's essential to enforce your rights.

Failure to take action can lead to your trade mark rights being diluted.

When it comes to enforcing your trade mark, it can be a use it or lose it situation.

Here's what you need to know about why and how to enforce your registered trade mark.

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Enforcing your trademark is the key to brand immortality

The role of the trade mark register

Becoming a registered trade mark owner gives you rights under the Trade Marks Act. The most significant is the exclusive right to use the mark, but there are other benefits.

If you don't have a trade mark registration yet, read this guide on whether you should file a trademark application.

Once you've decided to register your mark, check out our guide on how to file a trademark application.

It's possible to rely on other rights to stop the use of an unregistered trade mark. This may include arguing that the infringing conduct constitutes passing off and misleading and deceptive conduct. 

However, without a registered mark, it is often much more difficult to stop the infringement.

Why is it important to enforce your trade mark?

If you have a registered trademark that is being infringed, it's important to enforce your rights to stop the infringement.

The consequences of infringing conduct can be significant for your business. If you want to learn more, check out this article on the impact of trademark infringement.

Beyond the ongoing impact of infringing conduct, there are consequences for failing to enforce your mark.

If you don't enforce your registration, and the other person continues the infringing conduct over a period of several years, they could eventually obtain rights to the trade mark they're using.

If this happens, it will stop you from being able to enforce your rights against the other person. You can essentially lose the exclusive right to use your trade mark. 

It can also cause problems in the future if you try to expand the scope of the goods and services you supply under that trade mark.

In this situation, it may even be possible for you to infringe the other person's rights if you use the mark on goods or services that aren't protected by your registration!

When should you take action to stop trade mark infringement?

If you discover infringing conduct, it's important to take action sooner rather than later.

The longer it goes on unabated, the harder it usually is to stop the infringement.

The longer someone uses a trade mark, the more attached they become and the more they invest in it. This increases the cost and difficulty for them to stop any infringement.

This is particularly true for people who are unknowingly infringing your rights.

This can make the infringer more reluctant to voluntarily agree to stop using the mark, which might require you to take stronger action to stop the infringement, including complicated and costly legal proceedings.

On the other hand, if you enforce your rights as soon as you become aware of the infringement, it is more likely a simple cease and desist letter will solve the problem.

How do you enforce your trade mark rights in Australia?

Enforcing a trade mark usually involves:

  1. Gathering evidence of the infringement. This might include website screenshots and records of any confusion with your customers.

  2. Identifying and confirming that the conduct meets the legal threshold for infringement (which requires legal advice);

  3. Researching the infringer and their business. If it's a company, who are the directors, and how long have they been operating?

  4. Issuing a cease and desist letter;

  5. Using other tools to stop the infringing conduct. Some examples of these tools include reporting the conduct on social media/ecommerce platforms and filing domain name disputes;

  6. If you don't receive a satisfactory response, it may be necessary to escalate your demands with follow up letters and contact; and

  7. Ultimately, starting court proceedings in the Federal Court of Australia, the Federal Circuit Court, or the Supreme Court of your state or territory if you're otherwise unable to stop the infringement. It's common to seek an order for injunction and damages from the Court.

There are other ways to effectively enforce your rights.

For example, many online platforms including social media sites allow you to report trade mark infringement. This can be an effective way to reduce the impact of the infringement.

Every case of infringement is different, and it's important to get legal advice that will take into account your specific circumstances.

Trade mark enforcement infographic

Why is it important to use lawyers to enforce your trademark?

The goal of any legal action should be to resolve the dispute as quickly and as cost effectively as possible.

Having experienced trade mark lawyers on your side can help you achieve this.

1. They're skilled at identifying infringement

Infringement is a legal concept which requires an understanding of the law and legal precedent to properly identify.

Sometimes infringing conduct is obvious. However in most cases, it is more nuanced and requires careful consideration of the legal principles.

It's also important to make sure that you have the rights you need.

Before you start accusing anyone of infringing on your trade mark, it might be wise to file additional applications to bolster your intellectual property rights.

It's also important to ensure that you understand the scope of the infringement, and take all action necessary to stop it. This can include opposing trade mark applications if they have been filed.

2. They're more likely to be successful

Trademark lawyers are skilled in identifying and contacting infringers and developing a strategy that is likely to lead to successful enforcement of your rights.

A cease and desist letter from a trademark lawyer will generally be taken much more seriously than a letter from the registered trademark owner.

It indicates that the owner is taking the matter seriously and is willing to take action and spend money to enforce their rights.

3. They can help you avoid making unjustified threats

Getting enforcement wrong could lead to potential legal trouble for you.

If you wrongfully accuse someone of infringement, the person you're accusing could file an application in court to obtain a declaration that your accusation is an unjustified threat. It can also constitute misleading and deceptive conduct.

What is a cease and desist letter?

In the context of potential trade mark infringement, a cease and desist letter is sent by the owner of a registered trade mark to the alleged infringer.

Cease and desist letters can also be known as letters of demand.

The letter will typically:

  1. Identify the rights that are being relied upon (including extracts from the register).

  2. Identify the conduct that the potential infringer has engaged in.

  3. Set out your legal concerns, including that you believe that infringement has occurred.

  4. Set out your demands. This typically includes that the potential infringer stops using the mark and agree to never use it again.

When are court proceedings necessary?

Court proceedings can be started at any time - however they are generally used as a last resort.

If the infringer hasn't stopped after being notified and followed up, starting an infringement action may be the only way to protect your trade mark. 

Need help enforcing your rights against a similar trade mark?

If you need help with your trademark or have a trademark issue, contact us today.

*Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.


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