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Trademark infringement - how to identify and stop trade mark infringement

A trade mark registration gives the trade mark owner an exclusive right to use the mark in connection with the specified goods and services.

Many owners think that owning a registration means their brand is protected. However, a registered trade mark by itself doesn't stop infringement from occurring.

It's the owner's responsibility to enforce this right by identifying and stopping any infringement.

Ongoing infringement can have serious consequences for the value of your rights and your business.

Properly identifying infringement can be legally complex, and its important to get legal advice if you think your trade mark is being infringed.

Definition of trade mark infringement infographic

What is trademark infringement?

Trademark infringement is the unauthorised use of a sign that is:

  • identical or deceptively similar to a registered trademark; and

  • used in respect of identical or similar goods or services to those which are protected by the registration.

How do you identify trade mark infringement?

1. Use of a trademark that is identical or deceptively similar

The concept of "substantially identical or deceptively similar" is used in the Trade Marks Act 1995.

It's easy to identify when two marks are identical, however there is a grey area when it comes to deceptive similarity. How do you tell whether two marks are 'deceptively similar'? 

This question needs to be answered based on experience and an in-depth understanding of the legal precedents that apply.

A trademark lawyer will be able to tell you whether someone is infringing your trademark, and give you advice on the best course of action to enforce your rights and stop the infringement.

2. Similarity of goods or services

It's possible for two businesses to use the same or a similar mark in connection with different goods and services. 

Infringement occurs when the mark is used in relation to goods or services which are:

  • of the same description as the registered goods or services;

  • goods that are closely related to the registered services; or

  • services that are closely related to the registered goods.

Determining whether goods and services are 'of the same description' or 'closely related' requires legal experience and expertise.

While it can be easy to identify when the goods or services are the same, most cases of unknowing infringement occurs with respect to slightly different goods or services.

Determining whether this meets the legal test for infringement requires a consideration of how judges have decided previous legal cases.

A bunch of bottle caps each with their own branding.
Trademark infringement can significantly harm your business in several ways.

Defences to infringement

There are also a number of defences which can complicate the process of identifying infringement.

The defences include:

  • use of the person's name or place of business;

  • use of a sign in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services;

  • use for comparative advertising; and

  • if the person could obtain registration of the trade mark if they were to apply for it.

Perhaps the most common defence applies when the other person has been using the trade mark since before the owner of the registered mark.

Deliberate and unknowing/inadvertent infringement

Most infringing conduct can be grouped into two categories:

  • Deliberate infringement - happens when your brand becomes more recognised and valuable and someone wants to trade off your reputation. Examples include the sale of counterfeit products, and the use of another trade mark as 'inspiration' which crosses the line into infringement.

  • Unknowing or inadvertent infringement - happens when another trader isn’t aware of your brand, and they come up with a similar brand for their own business. It usually happens if a person hasn't conducted trade mark searches before they start using an unregistered trade mark. 

Unknowing infringement is more common than deliberate infringement for small-medium business owners, and it occurs more often than you'd think.

Both types have the potential to harm your business, diluting your brand’s uniqueness and leading to customer confusion and reputation damage.

How trade mark infringement can harm your business

Infringement can significantly harm your business in several ways. 

It undermines the value of your brand, affects customer loyalty, and imposes financial and operational burdens on your business.

Trademark infringement can lead to:

  1. customer confusion;

  2. loss of revenue; and

  3. financial and time costs to your business.

1. Customer confusion

Infringement can deceive or cause confusion among consumers, diluting your brand's strength and reputation. 

When a similar or identical mark is used by another entity, especially for related goods or services, customers may struggle to distinguish between the two. 

This confusion can divert sales and potentially tarnish your brand image if the infringing products or services are of inferior quality.

2. Loss of revenue

Infringement can lead to a loss of revenue for your business. 

If customers inadvertently purchase products or services from a competitor due to confusion caused by the use of a similar mark, your business's sales can suffer. 

Over time, this can have a substantial impact on your profitability.

3. Financial and time costs

The process of stopping infringing conduct can be costly and time-consuming. 

Legal action, negotiations, and attempts to resolve disputes require resources, including money and time that could otherwise be invested in business development and growth activities. 

If the infringer doesn't stop their conduct, it can lead to a legal battle. The costs can escalate quickly, including legal fees, potential settlement costs, and damages.

How trade mark infringement can harm your business infographic

What is the most common remedy for trademark infringement?

The most common remedy for trademark infringement without court action is for the infringement to stop.

This is the aim of a cease and desist letter, which is a formal request sent to the infringer requesting that they stop using the mark.

The outcome of sending a cease and desist letter may include entering into an agreement with the infringer where they agree to stop selling infringing goods or services, and agree to not engage in the conduct again in the future.

Depending on the severity, the registered trade mark owner might also seek payment for damages.

If the claim goes to court, the most common remedies include:

  • an injunction (an order by the court that the infringer stop the conduct); and

  • damages or an account of profits (the infringer pays the trademark owner for any profits they've made as a result of the infringement).

The court can order additional damages depending on the flagrancy of the conduct.

How to avoid trademark infringement

It's less likely that someone will inadvertently copy your mark if it is highly unique. 

Once you've already registered your trade mark and established a reputation in your brand, you can't necessarily avoid trade mark infringement.

However, you can be diligent about monitoring for similar marks by setting up a trade mark monitoring service. 

Having a monitoring service in place means that you'll be notified of any infringing trade mark application that is filed with the trademark office.

This enables you to take action early, which can improve your chances of stopping the infringing conduct without having to take legal action.

What to do if you think your brand is being infringed

If you think that your brand is being misused, it's crucial to act swiftly to protect your rights. 

The first step is to gather evidence of the problematic conduct, documenting the alleged infringement and how the other trader is using a mark similar to yours in a way that is likely to deceive or cause confusion. 

Next, consult with a trademark lawyer to understand your legal options and the best course of action. 

Why should you use a trademark infringement lawyer?

It's important to make sure that you get advice from a lawyer to properly assess your claim before you take any action. 

There are potential consequences for making "unjustified threats" with respect to infringement.

Sending a cease and desist letter could be an unjustified threat if the conduct in question doesn't amount to trade mark infringement. 

A person can apply to the court to seek a declaration that the threat was unjustified and can claim damages.

How do you respond to trademark infringement?

Once you have confirmed that the conduct constitutes infringement, the first step is to send a cease and desist letter to the infringer, requesting that they stop using the mark. 

If this initial step does not resolve the issue, you may ultimately need to file a lawsuit to enforce your rights. 

Throughout this process, maintaining records of your registration, usage, and any correspondence related to the infringing conduct is crucial for building a strong case. 

Acting promptly and decisively can help prevent further damage to your brand and business.

If you suspect that your mark is being infringed or if you have any concerns about protecting your trademark, please feel free to reach out.

Infringement case study

At Markster we often help our clients deal with and resolve infringements of their rights. One such example was a client of ours - let's call her Lucy. 

Lucy runs a successful pet food company. Her business received a complaint on its facebook page from a person who had bought pet food products from another company with the same name.

We discovered that the infringing company had also applied to register the mark with IP Australia.

It was only once a complaint had been made on our client's public facebook that the infringing use and subsequent application was discovered. 

It became apparent that other customers were confused about the infringing brand. The confusion among Lucy's customers had led to a loss of sales, as potential the buyers had inadvertently purchased products from the other company. 

Lucy's business reputation had also suffered. Customers who thought they were buying her high-quality pet food were instead getting an inferior product, leading to negative reviews and a decrease in customer loyalty. 

The situation demanded legal action to address the conduct, including a cease and desist letter and efforts to oppose the application to stop it from becoming registered.

Lucy's case shows how easily someone can infringe a registered trade mark and how infringement can harm your brand if it goes unnoticed. It also underscores the critical role of trademark monitoring in protecting your business.

Trademark monitoring is essential for any business to proactively detect unauthorised use of their brand and take timely action. It serves as an early warning system, allowing businesses to safeguard their intellectual property and maintain their brand integrity.

To learn more about the importance of monitoring and how it can serve as a protective shield for your brand, read our guide on trademark monitoring.

Need help with an infringement issue?

If your trade mark is registered and you need help with an infringement issue, feel free to contact us today.

Alternatively, sign up to our trademark tips newsletter for more helpful information on how to protect your brand. 

*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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