Trade mark infringement: how to identify it, what to do, and how to protect your brand

Trade mark infringement is the unauthorised use of a sign that is identical or deceptively similar to a registered trade mark, in connection with goods or services that are the same as or similar to those covered by the registration. If someone is using a mark that could be confused with yours, that may be infringement, and you have the right to stop it.

Identifying infringement can be legally complex, so it is important to get professional advice before taking action. This guide explains what infringement is, how to spot it, and what to do when you find it.

What is trade mark infringement?

Under the Trade Marks Act 1995 (Cth), infringement occurs when a person uses a sign as a trade mark that is:

• substantially identical or deceptively similar to a registered trade mark; and
• used in relation to goods or services that are the same as, or similar to, those covered by the registration.

Both elements must be present. Using a similar mark for completely unrelated goods or services is generally not infringement. Using an identical mark for identical goods or services almost certainly is.

Types of trade mark infringement

Identical marks

The clearest case. Another trader uses the same mark as yours for the same or closely related goods or services. This is straightforward to identify and usually straightforward to enforce.

Deceptively similar marks

A mark does not need to be identical to infringe. If it is "deceptively similar", meaning it is likely to cause confusion or deceive consumers, it can still amount to infringement.

Deceptive similarity is assessed by considering the overall impression the marks create, not just a side-by-side comparison. Factors include the look, sound, and meaning of the marks, and the context in which they are used.

Determining whether two marks are deceptively similar requires an understanding of legal precedent. A trade mark lawyer can assess this for you.

Similar goods or services

Infringement can occur even when the goods or services are not exactly the same, provided they are "of the same description" or "closely related" to those in your registration.

For example, a mark registered for "clothing" might be infringed by someone using a similar mark for "footwear", because those goods are often considered closely related.

How to identify trade mark infringement

1. Set up trade mark monitoring

The most reliable way to catch potential infringement early is through a trade mark monitoring service. A watch service scans trade mark registers for new applications that are identical or similar to your mark and alerts you before they proceed to registration.

Read our full guide on trade mark monitoring: what it is, how it works, and what it costs.

2. Check online marketplaces and social media

Infringement does not always start with a trade mark application. Look for unauthorised use of your brand on platforms such as Amazon, eBay, Etsy, Instagram, and TikTok. This is especially relevant for product-based businesses vulnerable to copycats.

3. Listen to your customers

Customer confusion is often the first sign of infringement. If customers mention buying your product from an unfamiliar source, or complain about quality issues you cannot explain, someone may be trading under a mark similar to yours.

4. Monitor business name registers and domains

Check company and business name registers for new registrations that are similar to your trade mark. Domain name searches can also reveal potential infringers setting up an online presence.

Deliberate vs inadvertent infringement

Most infringement falls into one of two categories:

• Deliberate infringement -- someone intentionally copies or closely imitates your brand to trade off your reputation. This includes counterfeit products and branding that uses your mark as "inspiration" but crosses the line into infringement.

• Inadvertent infringement -- someone independently creates a brand that happens to be similar to yours, often because they did not conduct trade mark searches before they started using it. This is more common than deliberate infringement, especially among small and medium businesses.

Both types can harm your business. Brand dilution, customer confusion, and lost revenue do not depend on the infringer's intent.

How infringement can harm your business

The consequences of trade mark infringement can be significant:

• Customer confusion -- consumers cannot tell your products or services apart from the infringer's, which can divert sales and damage your reputation if their offering is inferior.
• Loss of revenue -- customers who would have bought from you purchase from the infringer instead.
• Brand dilution -- your mark loses its distinctiveness when multiple traders use similar branding in the same market.
• Enforcement costs -- the longer infringement continues, the more difficult and expensive it becomes to stop.

What to do when you find infringement

Step 1: Gather evidence

Document everything. Take screenshots of websites, social media profiles, product listings, and packaging. Record dates and URLs. If customers have reported confusion, note those interactions.

Step 2: Get legal advice

Before contacting the infringer, consult a trade mark lawyer. They will assess whether the conduct meets the legal threshold for infringement and advise on the best approach. This is important because making an accusation that turns out to be wrong can expose you to a claim for "unjustified threats" under the Trade Marks Act.

Step 3: Take enforcement action

The usual first step is a cease and desist letter. If the matter cannot be resolved through correspondence, enforcement can escalate to opposition proceedings, negotiation, or court action. For a detailed guide on the enforcement process, read how trade mark enforcement works in Australia.

Defences to infringement

There are situations where use of a similar mark may not constitute infringement. Common defences include:

• Own name defence -- use of a person's own name or the name of their place of business.
• Descriptive use in good faith -- using a sign to describe the kind, quality, quantity, intended purpose, or geographical origin of goods or services.
• Comparative advertising -- using another trader's mark to compare products or services, provided the use is honest.
• Prior use -- if the alleged infringer was using the mark before the trade mark owner's registration, they may have a defence. This is one of the most commonly raised defences.
• Registrability -- the alleged infringer could obtain registration of their mark if they applied.

The existence of potential defences is another reason to get legal advice before sending a cease and desist letter.

Case study: how late detection made things harder

A Markster client -- we will call her Lucy -- ran a successful pet food company. She discovered that another company was using the same brand name only after a customer complaint appeared on her Facebook page. The other company had also applied to register the mark with IP Australia.

By the time Lucy found out, customers were already confused. Some had bought from the other company thinking they were buying Lucy's products. Her reputation had suffered from negative reviews about products she had not made.

The situation required legal action, including a cease and desist letter and an opposition to the conflicting application. If Lucy had been using a trade mark monitoring service, she would have known about the application when it was filed, well before the confusion set in.

FAQs

What is trade mark infringement?

Trade mark infringement is the unauthorised use of a sign that is substantially identical or deceptively similar to a registered trade mark, for goods or services that are the same as or similar to those covered by the registration.

What should I do if I think my trade mark is being infringed?

Gather evidence of the infringing conduct, then consult a trade mark lawyer before taking any action. They will confirm whether infringement has occurred and advise on the best enforcement strategy.

Can I send a cease and desist letter myself?

You can, but it is risky. If the conduct does not actually constitute infringement, your letter could be considered an "unjustified threat", which can expose you to legal liability. A lawyer can help you avoid this.

How do I prove trade mark infringement?

You need to show that the other party is using a sign that is substantially identical or deceptively similar to your registered mark, in connection with goods or services that are the same as or similar to those in your registration. Evidence such as screenshots, product listings, and customer reports of confusion all help build the case.

Need help with a trade mark infringement issue?

If your trade mark is being infringed, contact us or visit our enforcement services page to find out how we can help.

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.