Defences to Trademark Infringement

Written by Barry Meskin on 28 September 2022

If you own a registered trade mark or plan to register a trade mark, trade mark infringement is likely something you will at some stage become familiar with.

No matter where you are in your journey of trademarking your business, goods or services, the risk of infringement is ever-present. Whether by yourself inadvertently infringing or someone else infringing on your registered mark, it is important to be aware of available defences to trademark infringement.

At IP Guardian, our team of highly skilled and experienced trade mark attorneys can help you remain clear of infringing behaviour and stop others from using your registered trademark.

What Exactly Is A Trademark?

A trade mark is any sign, symbol or expression that a business uses to distinguish its goods and services from other businesses. A trade mark is considered to be a type of intellectual property and as such there are rights in place to protect who can use it and how.

Even a similar or closely related image or phrase can be viewed as infringing on the rights of the registered owner.

Examples of well-known trademarks include a vehicle manufacturer's trademark such as the Mercedes logo and software company logos such as the Apple iPhone "bitten apple" image. Whether you are a large-scale company or a small business, infringement can adversely affect their success.

blueprint design

What Is Considered Infringing Behaviour?

Infringing behaviour comes in many forms. It can be as obvious as another individual or entity using a known trade mark to market their goods or services. It may also be done surreptitiously such as by using a deceptively similar or substantially identical logo or name.

Trademark infringement can lead to confusion, deception, or misunderstanding for the consumer.

No matter how it presents, infringing behaviour can be incredibly damaging to the relevant trade mark owner. Not only can there be financial loss involved but the reputation of the genuine owner of the trade mark can be detrimental.

Infringement Proceedings

If you discover that someone has engaged in unlawful use of your trade mark or trade marks, you do have several avenues available for defending them.

Trade mark rights are clearly outlined in the Trade Mark Act 1995 and offers protection both in the geographical location where the trade mark is filed. Infringement proceedings most often follow a few defined steps and it is highly recommended you engage professional legal advice to guide you through these.

As detailed by IP Australia, the Government department that manages IP law in Australia, to prove trademark infringement you must establish that:

  • The infringing trademark is being used on identical or similar goods and services for which your trade mark is registered.
  • The infringer's sign or trade mark is substantially identical or deceptively similar to your trade mark and may cause confusion about the product’s origin.

Initially, your trademark attorney will perform several checks to determine ownership of the registered trademark in question and that there are no conflicts regarding this ownership.

They will also review the alleged infringing trademark for deceptively similar features, whether they use the same description, its intended purpose or any other characteristic the same as your well-known trade mark.

Following this establishment of ownership and outlining of infringing behaviour, a cease and desist letter can be sent. This letter will instruct the infringing party about your exclusive rights to use the mark and undisputed ownership - requesting them to immediately stop using it.

Should the infringing mark continue to be used, you may opt to pursue mediation or court proceedings. Be prepared to face cross-claim or unjustified threats from the infringer, though as they may also feel they had legitimate prior use of the same mark.

The alleged infringing mark will also be assessed for:

  • Use of comparative advertising, are they targeting the same audience?
  • The intended purpose of the trademark's use, is it intending to deceive consumers or is it a genuine error - also known as the good faith defence.
  • Are the goods or services in question in the same class and easily confused as the same business? Or are they unrelated goods that no reasonable person would mistake?

All these factors and more will be used to decide on compensation for the infringement and who is the rightful owner as per the trade mark register.

Defences To Trade Mark Infringement - Australia

Unregistered Trade Mark

It is possible to defend an unregistered trade mark, though this will present some additional challenges.

You will need to present significant proof of when you began using the trade mark, whether you performed appropriate ownership searches before using it and how well-known the trade mark is in relation to your goods or services.

We highly recommend making sure your trade mark is registered. Doing so stops you from investing time and money in a trademark that may already be in existence or from facing challenges stopping infringement in future.

Registered Trademark

Defending yourself against trademark infringement is significantly easier if your trade mark has been previously registered. A properly registered trade mark clearly defines ownership and permitted use of the trade mark.

It will also demonstrate that you performed due diligence in checking the trade mark or a similar one was not already in use and when you began using it as the trade mark owner.

The Best Defence

Properly handled trade mark applications and registered trademarks are the single best defence against infringement you can have. They are also amongst the most common defenses to trademark infringement.

As the registered trademark owner, you are much more likely to achieve your desired outcome whether in mediation or via federal court.

We see this time and time again in trade mark infringement cases, the proven owner of the relevant registered trademark escapes lengthy court proceedings and unfavourable rulings.

defending in court

How To Obtain Registration

Wondering how to avoid trademark infringement? Trade mark application is the first step in registering your trademark for protection under the trade marks act. You should always engage a properly qualified trade mark attorney who will guide you through the entire process of trade mark registration.

From performing in-depth checks on your proposed trade mark to your application and final registration, we can do it all.

Whether you need help with one or two trade marks, the team at IP Guardian offer affordable, fixed-fee support that meets all IP Australia legislation.

IP Guardian The Experts In Trade Marks

At IP Guardian we recognise that IP and trade mark law can be overwhelming and confusing. Our down-to-earth approach and cost-effective service ensure everyone can access the necessary protection and defence for their trade mark.

We know that mistakes can happen in good faith and as such we also offer advice and defence support should you be accused of infringing on another's intellectual property rights. With over two decades of experience in patent and trade mark law, our team offers a broad range of services designed to support business owners.

Work with a professional team that is across all available defences to trademark infringement, Australia and overseas and that always deliver exceptional service and outcomes.

Servicing Sydney, Adelaide, Brisbane, Melbourne and The Gold Coast, we're here when you need us most. Contact IP Guardian today on 02 9071 0130.

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