Trade mark enforcement

Trade mark infringement and enforcement in Australia

Whether someone is infringing your trade mark or you have received a cease and desist letter, we can help you assess the situation, develop a strategy, and resolve it.

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“We had a trade mark infringement upon our brand for ten years. Within four weeks of engaging Kate, we had a resolution to the problem and no longer have an infringement of our trade mark. I cannot recommend Markster highly enough.”

Jacine Greenwood

CEO and Founder

Roccoco Botanicals

Roccoco Botanicals

What is trade mark infringement?

Trade mark infringement occurs when someone uses a mark that is substantially identical or deceptively similar to your registered trade mark for similar goods or services, without your permission. It is not limited to exact copies. A mark that looks, sounds, or conveys a similar idea to yours can infringe if it creates a likelihood of confusion.

In practice, infringement takes many forms. It can be a competitor launching a product under a confusingly similar name, counterfeit goods bearing your brand, a domain name that incorporates your trade mark, or a social media account impersonating your business.

The Trade Marks Act 1995 provides the legal framework for trade mark infringement in Australia. It establishes two tests for infringement: use of a mark that is substantially identical to yours, or use of a mark that is deceptively similar, in both cases for goods or services that are the same or closely related to those covered by your registration.

If you suspect infringement, the first step is to gather evidence and assess whether infringement has occurred. Not every similar mark is infringing. The context, the goods and services involved, and the scope of your registration all matter.

Enforcement

Enforcing your trade mark rights

If someone is using your trade mark without permission, you have options. The right approach depends on the nature of the infringement, the strength of your rights, and your commercial objectives.

Cease and desist letters

Formal letters demanding that an infringer stop using your trade mark. Often the most cost-effective first step in enforcement.

Opposition proceedings

Formal proceedings to oppose a trade mark application that conflicts with your existing rights, before it reaches registration.

Negotiation and settlement

Strategic negotiation to resolve disputes efficiently. Many enforcement matters are resolved through negotiation without formal proceedings.

Cancellation actions

Proceedings to remove registered trade marks that were wrongly registered or are no longer in use.

Platform and online enforcement

Takedown requests on marketplaces, social media platforms, and domain name disputes. A practical, cost-effective way to address online infringement.

Customs and border protection

Notices to Australian Border Force to intercept counterfeit goods bearing your trade mark at the border.

Read our detailed guide to trade mark enforcement in Australia.

“Kate responded to my first email on a Saturday and was straight onto this case the following Monday. In a particularly delicate and emotional time for me, she took the reins, kept me informed and was flexible to my needs. The outcome she achieved on behalf of me and my business was amazing.”

Leone Wilson

Leone Wilson

Founder

Harvesting Health

Defence

Received a cease and desist letter?

If you have received a cease and desist letter or been accused of trade mark infringement, do not ignore it. But do not assume you need to change your trade mark either.

Some cease and desist letters are well-founded. Others are frivolous, overly broad, or based on weak rights. The biggest misconception is that a cease and desist letter automatically means you are in the wrong, or that it can be safely ignored. Neither is true.

You need someone who can assess the scope of the rights being asserted, evaluate the merits of the claim, and identify your options. There is often more room to negotiate or defend your position than the letter suggests.

We handle incoming infringement claims the same way we handle outgoing ones: by assessing the situation, developing a strategy, and implementing it.

What we assess

  • The scope and validity of the trade mark rights being asserted against you
  • Whether the claim has merit based on the actual goods, services, and marks involved
  • Whether the letter constitutes a groundless threat under the Trade Marks Act
  • Your options: negotiate, defend, comply, or take counter-action
  • The commercial implications of each option for your business

Groundless threats

Under section 129 of the Trade Marks Act, if someone makes unjustified threats of trade mark infringement, the person threatened can seek a declaration from the court that the threats were unjustified. A poorly drafted or overly aggressive cease and desist letter can expose the sender to liability. If you have received one, this is one of the things we assess.

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Our process

How we handle enforcement matters

Every enforcement matter is different. We develop a strategy that fits your situation rather than applying a template approach.

01

Assessment

We assess the situation, review the relevant trade mark rights, and advise you on the strength of your position. This initial assessment is free.

02

Strategy

We develop a strategy tailored to your situation, commercial objectives, and budget. Every enforcement matter is different.

03

Action

We implement the agreed strategy, whether that means sending a cease and desist letter, filing an opposition, negotiating a resolution, or defending your position.

04

Resolution

We work to resolve the matter and, where appropriate, recommend ongoing monitoring to prevent future issues.

Why strategy matters

Most trade mark infringement is not deliberate. Unlike counterfeiting or brand hijacking, most cases involve traders who genuinely do not know they are infringing. They have chosen a name or logo without checking the register, or without understanding how trade mark rights work.

This changes the enforcement approach. When infringement is unknowing, the strategy is less about aggression and more about clearly explaining why the use needs to stop, the scope of your rights, and the potential consequences of continued use. A well-crafted approach that educates rather than threatens is more likely to achieve a quick resolution and less likely to escalate into a costly dispute.

When infringement is deliberate, a different approach is warranted. The strategy, tone, and timeline all need to reflect that. This is why a template cease and desist letter is rarely the right answer. We tailor the approach to the specific circumstances of every matter.

Take action

When to seek enforcement advice

Early action is almost always more effective and less expensive. The longer infringement continues, the harder it is to stop and the more damage it can cause.

If you have trade mark monitoring in place, you will be alerted to conflicting trade mark applications as they are filed. This gives you the opportunity to oppose the application during the two-month opposition window, which is far less expensive than enforcement after registration.

If you do not have monitoring in place and discover infringement by chance, act promptly. Delay can weaken your position. If someone uses a mark over a period of time without challenge, they may be able to establish honest concurrent use and defend against your claim. The longer you wait, the stronger their position becomes.

On the other side, if you have received a cease and desist letter, the letter will usually include a deadline for response. Take that deadline seriously, but do not rush into a decision without proper advice.

Signs you should enforce

  • A competitor is using a similar or identical mark for similar goods or services
  • Customers are confusing another business with yours
  • Counterfeit products are bearing your trade mark
  • Someone has registered a domain name incorporating your mark
  • A social media account is impersonating your brand
  • A conflicting trade mark application has been published

Signs you need to respond

  • You have received a cease and desist letter
  • A trade mark owner has opposed your application
  • You have been notified of infringement proceedings
  • A platform has removed your listing due to a trade mark complaint
FAQs

Common questions about trade mark enforcement

Answers to frequently asked questions about trade mark infringement and enforcement in Australia.

What is trade mark infringement?
Trade mark infringement occurs when someone uses a sign that is substantially identical or deceptively similar to your registered trade mark for similar goods or services without your permission. It is not limited to identical marks. A mark that looks, sounds, or conveys a similar idea to yours can infringe if it is used for overlapping goods or services and is likely to cause confusion. Read more about how to identify and stop trade mark infringement.
What should I do if someone is infringing my trade mark?
Gather evidence of the infringing use, then seek advice from a trade mark lawyer to assess your position. Common next steps include sending a cease and desist letter, filing an opposition if the infringer has applied for registration, or initiating formal proceedings. Read our guide to trade mark enforcement in Australia for a detailed overview of your options. Acting early is important. The longer infringement continues, the harder and more expensive it becomes to stop.
What should I do if I receive a cease and desist letter?
Do not ignore it, but do not assume you need to change your trade mark either. Have the letter assessed by a trade mark expert. Some cease and desist letters are well-founded, but others are frivolous, overly broad, or based on weak rights. You need someone who can assess the scope of the rights being asserted and whether the claim has merit. There are often options available beyond simply complying.
How much does trade mark enforcement cost?
Enforcement costs depend on the nature and complexity of the matter. We provide a fixed-fee quote before starting any work so you know what to expect. The initial assessment is free. Simpler matters like cease and desist letters are at the lower end, while opposition proceedings and litigation involve more time and cost.
Can I enforce an unregistered trade mark?
It is possible, but significantly harder and more expensive. Without registration, you would need to rely on the common law tort of passing off or the misleading and deceptive conduct provisions of the Australian Consumer Law. Both require you to prove an established reputation in the mark, a geographic area of that reputation, and a likelihood of confusion. A registered trade mark gives you a clear, statutory right that is far simpler to enforce.
What is the difference between trade mark infringement and passing off?
Trade mark infringement is a statutory claim under the Trade Marks Act 1995 and requires a registered trade mark. Passing off is a common law claim that protects unregistered trade marks and requires proof of goodwill or reputation in the mark, a misrepresentation by the other party, and actual or likely damage. Passing off claims are more difficult and expensive to run because you need to prove reputation and goodwill, whereas a registered trade mark is presumed valid.
What are the penalties for trade mark infringement in Australia?
Under the Trade Marks Act 1995, remedies for infringement include injunctions (court orders to stop the infringing use), damages or an account of profits, and delivery up or destruction of infringing goods. For criminal offences involving counterfeit goods, penalties can include fines and imprisonment. Most commercial disputes are resolved well before reaching this stage, often through a cease and desist letter or negotiation.
What are groundless threats of trade mark infringement?
Under section 129 of the Trade Marks Act, if someone makes unjustified threats of trade mark infringement, the person threatened can seek a declaration from the court that the threats were unjustified. This means a poorly drafted or overly aggressive cease and desist letter can expose the sender to liability. It is one of the reasons professional advice is important before sending enforcement correspondence.
Can I take action against a mark that is similar but not identical to mine?
Yes. Trade mark infringement covers marks that are deceptively similar, not just identical ones. The assessment of similarity considers visual, aural, and conceptual resemblance between the marks, as well as how closely the goods or services overlap. Many infringement matters involve marks that are similar rather than identical.
Can I enforce my trade mark internationally?
Trade mark rights are territorial. You can only enforce your trade mark in countries where you have a registration or established rights. If you need to take action internationally, you will need registrations in each relevant country. Our international trade mark services can help you secure protection and coordinate enforcement across multiple jurisdictions.
What is a cease and desist letter?
A cease and desist letter is a formal letter sent to an infringer demanding that they stop using your trade mark. It outlines your rights, the infringing conduct, and the consequences of continued infringement. It is often the most effective and affordable first step in resolving trade mark disputes, and many matters are resolved at this stage without needing to go further.
How long does trade mark enforcement take?
It depends on the matter. A cease and desist letter can be drafted and sent within days, and many recipients respond within weeks. Opposition proceedings before IP Australia can take 12 months or more if the matter proceeds all the way to a decision. Negotiated settlements vary depending on the complexity and the willingness of both parties to reach an agreement. We keep you informed throughout and aim to resolve matters as efficiently as possible. Setting up trade mark monitoring helps you detect conflicts early, when enforcement is fastest and least expensive.
More services:Trade mark applications|Trade mark monitoring|Strategy & advice|International trade marks

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