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Trade mark infringement explained

How do you know if your trade mark is being infringed, and what should you do about it? Read on for the answers.

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Before we get into the nitty gritty of trade mark infringement, I need to start with a tip: 

If you think your trade mark is being infringed do NOT contact the person concerned until you’ve spoken to a professional. If you make ‘threats of action’ against people with no grounds to be doing so, they can sue you! 

What is trade mark infringement?

Trade mark infringement (generally speaking) occurs when someone uses an unregistered ‘sign’ (name, logo, slogan and other elements of your business branding) “as a trade mark” and which is:

a)     too similar to a registered trade mark; and

"If you make ‘threats of action’ against people with no grounds to be doing so, they can sue you!"

b)     for the same or related goods or services to the registered trade mark. 

The “as a trade mark” rule is an important one. A trade mark by definition is a sign used to distinguish goods and services sold by different traders. If a person uses a purely descriptive term within their business literature, it may not be viewed as ‘use as a trade mark’ to enable infringement action by a registered trade mark holder. 

Defenses to trade mark infringement

The Trade Marks Act 1995 outlines several situations where a person will be found not to have infringed a trade mark. This is just one of the reasons to seek assistance before contacting other people about using ‘your trade mark’ – you need to be aware of the possible defenses they may have. As just a couple of examples, a person is not considered to be infringing a registered trade mark when:

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  • They actually used the particular trade mark before the registered trade mark owner first used their mark, or first registered it as a trade mark (whichever is the earlier date); and
  • They are using a ‘sign’ simply to indicate the kind, purpose, quality or some other characteristic of the relevant goods or services. 

International infringement

Trade mark registration rights apply in the country (or countries) of registration only. As the owner of a registered trade mark in Australia you cannot start telling people in other countries to stop using the same name. In fact, they might even have their own trade mark registration in their own country! 

I have seen a lot of examples since social media became such a popular business tool of trade mark owners from one country telling people in other countries that they can’t use particular names as page names etc. If you have a trade mark and come across someone on a social media website using that same name as their User ID or page name – do your homework before any contact is made with them and never make public posts to them about your concerns. 

What to do if your trade mark is being infringed

If it’s determined that your trade mark is being infringed, the usual first step is to issue a ‘cease and desist’ letter to the infringing party. This sort of letter will usually outline the trade mark owner’s rights, and the concerns over the infringing party’s conduct. It will then set out terms or demands for the other party to agree to so as to see the matter resolved. When the matters can be settled this way it’s often in both parties’ best interests, as it can be a low-cost and quick means to resolve the issue and move on. 

You can draft and send this sort of letter yourself; however, often people will take the demands more seriously when sent by a trade mark specialist or trade mark attorney. 

The owner of a registered trade mark in Australia does have the right to instigate legal (court) action against infringers. If such action is successful the trade mark owner will be entitled to an injunction to stop the infringing party from using the infringing trade mark, and also damages or an account of profits (at the trade mark owner’s election). This sort of action can be quite costly so where appropriate a letter should first be sent to the infringing party. Courts may also consider whether you tried to resolve the matter with the other party first when assessing costs in the proceedings. 

The most important action to take if you think your trade mark is being infringed is to seek professional advice. Only then can you be sure but the best move to take next. 

Have you encountered trade mark infringement in your business? What happened? 

Jacqui Pryor

is the director of Mark My Words Trademark Services Pty Ltd and brings with her 18 years experience in dealing with Australian & International trademark matters - affordably and professionally.

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