Understanding Trademark Infringements & Disputes in Australia

A lot of business owners don’t enjoy dealing with the legal side of their company as it can be quite overwhelming having to deal with matters such as legal protection. Many people are inexperienced in the area of intellectual property (which includes the likes of trademarks, copyrights and patents) and are often unaware they should register a trademark for things like their logo or business name.

However, it’s important to protect your intellectual property and brand from possible infringements from other traders in the marketplace both locally and overseas. Registering your trademark affords you the protection over your unique and distinct product names, logos, business names, slogans and various other distinguishing aspects of your business within the country you have registered.

The ownership of a trademark carries with it responsibilities. Ensuring the trademark remains active and is not subjected to notices of removal or cancellation are just some of the steps to truly protecting your trademark. The Trademark Office, IP Australia, will not monitor or police your rights so it is your job to protect your trademark against any potential infringements or disputes.

Types of Infringements and Disputes

An infringement of a trademark may occur when another party that has no registered trademark, uses (without authorisation) a sign as a trademark similar or the same, as another person’s mark for the same or related sorts of products and services covered by the registered mark. Section 120 of the Trade Marks Act 1995 (the legislation for all aspects of trademarks in Australia), outlines all the ways in which a ‘sign’ (e.g. an unregistered trademark; a distinctive name, logo or slogan) may infringe upon a registered trade mark.

These include:

The sign is substantially identical or deceptively similar to the registered trademark
The goods or services are closely related or in the same description
The trade mark is very familiar to the public

In general, infringements occur when an individual or company begins using a similar mark to one already registered, which is likely to result in confusion within the marketplace. A good example of such an infringement would be when somebody starts using a logo which is similar or the same as a registered brand. A dispute or infringement arises as a result of the aggrieved party wanting to put a stop the unauthorised use or what they allege as unauthorised use by another party.

How Common are Infringements and Disputes?

At Mark My Words we’ve witnessed many disputes arise over trademarks, but actual legal proceedings pertaining to infringements, occur less often. Approximately three quarters of the clients we advise on infringement matters will appear to have a legal basis to their claims, with around a quarter having no legitimate claim – regardless of how much they believe they might.

While the legislation about trademark infringement may seem simple, trademark disputes can become very complicated, and it is easy for trademark owners to sometimes rush in and seek to protect their trademark from a perceived infringement – without realising that no infringement actually happened. It’s important to understand that threatening legal action for trademark infringement, with no grounds to do so, can actually allow the other party grounds to instigate action to prevent such groundless threats.

Trademarks can be very personal for people – they represent all their hard work and their commercial value within the marketplace – and as such can result in strong reactions when someone believes that is being threatened. This is why it’s important to seek advice before taking any action. Getting clear, professional advice from an intellectual property expert will help to prevent any unnecessary and potentially harmful behaviour.

What Should I Do If I Believe my Trademark is Being Infringed Upon?

In the situation where you believe someone is infringing upon your trademark, you need to seek professional advice as soon as possible. As the trademark holder, it’s your responsibility to protect your intellectual property and trading reputation, as much as possible. Any delays in doing so may affect your ability to recover costs or financial compensation, should the matter require legal proceedings.

A trademarks attorney will be able to provide objectivity surrounding your concerns and give you an independent opinion as to the validity of your claim. A trademark expert will also be able to narrow down the scope of the potential infringement and ensure any contact with the alleged infringer will not be viewed as groundless.

From this point, the following usually occurs:

On assessment of the information and the discovering of a valid claim for an infringement of your trademark, we’ll begin by drafting a letter of demand to the alleged infringer. This letter will clearly state your rights in relation to your trademark; the actions the alleged infringer took to potentially breach those rights; and the actions they need to take to stop the breaches from occurring. These letters use non-emotive language and are designed for a clear and defined outcome.

Should this action resolve the matter, no further action will be required. However, in the event that a dispute continues, further action may be required in order to prevent continuation of the alleged infringement. This could be via an alternative dispute resolution (ADR). An ADR may be appropriate to mediate between the two parties to attempt to resolve the matter without resorting to legal proceedings. Or, it may be that legal proceedings are be required. As a registered trademark owner in this situation, you have the right to seek relief, through the relevant courts, from the infringement. This includes an injunction to stop the conduct and then proceedings to determine if infringement has indeed occurred where by you may seek damages or an account of any profits, and costs.

By seeking professional advice you’re showing a proactive approach in the protection of your trademark rights, as well as trying to resolve matters before embarking on costly and time-consuming court proceedings.

What Happens After I Receive a Letter of Demand?

If you receive a letter of demand it is vital that you don’t try and deal with the matter yourself. Seek the help of a trademark expert as soon as possible as in the past, we’ve seen clients receive a letter of demand and be too upset or worried to respond appropriately. Without professional guidance, you may end up agreeing to terms without really understanding the implications or respond in a way that makes the issue worse. In some cases, we’ve known people to agree to the rebranding and changing of names only to later discover there was no legal reason for them to do so. When you openly agree to change your name, the other side may rely on that communication if you later change your mind. It is always best to get the professional advice before responding to any communication.

At Mark My Words, we will be able to assess the letter on your behalf and determine if there are any legitimate claims. We will also help you with drafting an appropriate response and advise you on how to proceed in order to resolve the issue. It’s important to maintain a level of professionalism with all forms of communications. If you are receiving professional advice, then the correspondence between you and the other party will come through us at Mark My Words.

Legal Proceedings

The team at Mark My Words always strive to avoid going to court as a means of resolving your trademark dispute. This is made easier by our clients enlisting professional advice as soon as being made aware of any potential breaches (or being accused of one) as well as doing everything possible to resolve the matter via the correct channels. We have a strong history in coming to commercially sensible results based on negotiations and helping clients avoid the cost and stress of legal proceedings.

If the matter cannot be resolved pre-litigation, it would be necessary for us to refer you to an appropriate IP Litigation firm. Should the matter result in court, it can be a complex process, with some disputes taking years to resolve. Regardless of the result, you will still need to pay legal fees. After hearing a trademark infringement case (if found in favour of the person alleging infringement has occurred), as a general rule the court may award relief as set out in section 126 of the Trade Marks Act 1995 in terms of:

An injunction against the infringer, who will then be made to cease using the relevant sign
Grant the registered trademark owner damages or an account of profits
Legal Costs

If costs are awarded, often the award does not recover all of the actual costs incurred by the party. Going to court should be the last option, and thankfully for most people dealing with potential trademark infringements, disputes can be settled before it reaches that point.

Need help? Contact Us at Mark My Words

The best way to protect yourself against potential trademark infringements and disputes, is to have a professional create an infringement strategy. It’s worth remembering, that while you do need to remain proactive in safeguarding against potential infringements, you do not need to deal with the matter by yourself – getting professional, expert advice can save you a lot of hassle and money in the long run.

Mark My Words are highly qualified and experienced in the area of trademark infringements and disputes. We able to manage the entire process from start to finish leaving you to get on with running your business.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.