Home – New Forums Starting your journey If a trademark exists overseas but isn’t registered here should you still use it? Reply To: If a trademark exists overseas but isn’t registered here should you still use it?

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Mumnesia, post: 102391 wrote:
I was hit with an ‘Infringement of Copyright’ last year by a company who registered & trademarked the design in 2001.

Hi Mumnesia – you are right – evidence of ‘prior use’ will most often ‘win’ a case like this.

Just to clarify for anyone else that may be along and read this post – Copyright, Registered Trademarks and designs are three separate forms of intellectual property (often cases will involve all three). Copyright is an automatic right generally granted to the original author of a ‘work’ that is categorised as copyright; trademarks are ‘signs’ (be that a name, logo, slogan etc) that are used to distinguish one person’s products/services from those of others and ‘designs’ relate to the overall appearance of a product – the look.

I mention this more so in case someone else is faced with such an issue, especially with allegation of ‘design infringement’ – a design is only registrable if is new and distinct, and further more, a person may only make such allegations of design infringement if they have gone through the process of having their design examined and certified – if they haven’t done so and make this claim this is a breach of the design laws operating in Australia. If ever you become aware that someone has registered a design and don’t consider it to be new and distinct it is possible to make such a request for examination on another person’s design.

Also, designs have a maximum protection period of 10 years under the current Designs Act in operation in Australia so anyone receiving such letters/claims concerning design infringement would be encouraged to really check out whether the person sending the claim truly has the right to do so; if allegations are made without the examination/certification, then it is even posisble to take action against the person for making a ‘groundless threat’.

Anyway – Mumnesia, thanks for sharing your post and experience – I think that there is a lot of value for others who may one day be in a similar situation and ‘assume’ there’s not much they can do about it and your post clearly shows that you can do something!!