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If you've made a worrying discovery regarding the misuse of your trademark you’ll need to take steps to rectify the situation. Thankfully there are several options open to you to resolve the issue.
Covered under intellectual property law, trademarks, their ownership and use are protected. You are entitled to report trademark infringement and seek resolution the same as you would for other intellectual property violations.
To help you better understand your rights and how to report trademark infringement, we’ve prepared this easy-to-follow guide.
Trademark infringement refers to any unauthorised use of a registered trademark or service mark that is legally owned by another party.
Trademark infringement is an issue as it can cause confusion or misunderstandings for the consumer. This deception in turn leads to a loss of revenue for the trademark holder and damages a brand's reputation.
Before you take legal action regarding trade mark infringement you must establish two key things that prove infringing behaviour has occurred.
These criteria are outlined in Australia’s IP infringement guidelines:
You must be able to prove that the infringing trademark is being used on identical or similar goods and/or services for which your trade mark is registered and that
the infringer's sign or trade mark is sufficiently similar to your trade mark and as a result, could cause confusion for customers about the product’s origin.
Examples of infringing behaviour regarding a trademark include using similar branding, colour schemes, wording or text styles to an existing brand. It may also involve selling a similar or identical product or service.
The methods for reporting trademark infringement will differ slightly depending on the type of violation. It will also differ based on where the behaviour is occurring such as on social media.
To report domain name trademark infringement you should first lodge a complaint with auDA (The Australian Domain Name Authority). They will then review your claim and take the necessary action. This could mean ordering the offending party to sign over ownership of the copycat domain to your business.
The governance of the auDA only covers domains ending in .au and does not extend to top-level domains such as .com or .org. These are handled by other international governing bodies. To challenge issues outside of Australia, you will need to contact the relevant governing body for the country in which the offending domain is registered.
If none of these methods brings about a resolution, you can then proceed with a letter of demand or legal action. These are the same steps you would take for general trademark violations, launching legal action acts as a method of reporting trademark infringement in these instances.
If you are sure that someone is engaging in infringing behaviour utilising your trademark on the Facebook platform, you can easily report it via this form. You must be certain that the behaviour constitutes infringement and be prepared to accept their determination or provide further evidence.
Repeated submissions of the form for the same issue can see your account terminated, so proceed with caution.
Similar to Facebook, Instagram offers a reporting facility for trademark violations. This can be accessed here. Due to the legalities involved, they cannot act on any Instagram trademark infringement reports needing a more in-depth review.
They suggest reaching out to the individual responsible for the infringement first before taking it further.
To submit an eBay trademark infringement report for infringing behaviour on their platform you must complete a Notice Of Claimed Infringement (NOCI) form by email. eBay will take action accordingly and remove the listing while also emailing the offending party with details of why this occurred. They also include the contact details of the trademark owner so there can be no question as to the rightful owner of these rights.
Offering a Verified Rights Owner (VeRO) program, eBay is committed to supporting individuals to protect their trademarked goods. Participation in this program, which is free to join, makes it easier for eBay to facilitate the identification, searching, reporting and removal of infringing items. It is highly recommended all sellers join this program.
As with the former platforms, Google also makes for easy reporting of trademark violations via a Trademark Complaint Form. Before doing this it is recommended that you review their Trademarks Policy regarding what they will and won’t investigate.
They also request that you verify your eligibility to submit a complaint in advance this includes:
Having an email address domain that matches a corporate domain or website OR a PDF of a signed company letterhead confirming your ownership of the trademark.
Having attorneys of record listed on your trademark registration documentation.
Failure to verify these elements may see your report rejected.
Not getting anywhere with the provided reporting tools? You do have more serious avenues available for resolving your concerns.
A letter of demand requesting the offender to cease and desist from engaging in the infringing behaviour would be your next step. This is often quite effective, particularly if prepared by a lawyer specialising in patent and trademark law.
These letters usually outline what will happen if they do not adhere to your request such as pursuing legal avenues for a resolution.
Not getting anywhere with the provided reporting tools? You do have more serious avenues available for resolving your concerns.
Typically the first step in resolving infringement, a letter of demand is a legal document that requests the offender to cease and desist from engaging in the infringing behaviour immediately. The letter aims to enforce IP rights while offering the recipient an opportunity to address the issue before the case escalates to court, helping both parties potentially avoid lengthy litigation.
Outlining the trademark rights being violated, this letter also specifies the nature of the infringing activities and sets out the actions required to resolve the matter. This may include requests not only to stop using the mark but also to destroy infringing materials or compensate for damages.
Only recognised by a court when legally compliant, it is best to have a letter of demand drafted and sent by a qualified trademark attorney.
Alternative Dispute Resolution (ADR) involves the use of mediation, arbitration or expert determination to decide on an outcome for reported violations. It is usually faster and less expensive to pursue this avenue over court action.
The reported infringement will be assessed in a single process that accounts for your IP rights across multiple jurisdictions. For international disputes, you can report and pursue a resolution via the WIPO Center which offers a range of ADR services.
The beginnings of legal action against an infringer act as a reporting method. Often a lengthy process, the court may order an interim injunction against the infringers to stop their behaviour until an outcome can be determined.
Court action is very serious in nature and it is essential that you are properly prepared to defend your rights to the trademark in question. To achieve this, you should contact experienced and qualified patent and trade mark infringement attorneys to represent you.
You should also be aware that any court-ordered outcomes are usually binding and not open for appeal. This is why you should exhaust all other avenues for reporting and resolution before taking this final step.
If all this sounds exhausting, you’re right! The process of reporting and dealing with infringing behaviour can be incredibly frustrating and difficult. To avoid these challenges or mediate their frequency you should take steps to protect yourself and your trademark against infringement.
One of the easiest deterrents you can employ is to utilise the ® symbol in conjunction with your trademark. This is a very visible sign that you have taken the proper steps to register your trademark and therefore hold exclusive rights and ownership over it.
When selecting your trademark, it is also advisable to choose something unique. Generic words, symbols or phrases can frequently be used by others who have no intention to infringe, defending your rights for generic trademarks can be significantly harder also.
Proactive actions are the best way to find potentially infringing behaviour and stamp it out. Periodically you should perform your own searches and checks online for similar products, names, symbols or similar.
Still within the 10-year standard registration for your trademark and think you’re wholly protected? Think again. After five years on the register, a third party can request the removal of your ownership over the trademark if they feel you have not been using it for its intended purpose.
You will then need to reapply for your trademark or potentially battle someone else for ownership.
To learn more about how to protect yourself, you may like to read our associated article here.
If you’re struggling with infringing behaviour and unable to resolve it, or simply do not have the time to handle it yourself, the better choice is to engage professional assistance. At IP Guardian, our highly skilled and experienced patent and trademark attorneys have successfully navigated these scenarios for years.
We handle the reporting and resolution of trademark infringement with ease while also helping you prepare infringement strategies to avoid future issues. Our involvement can often see instances of infringement rapidly resolved without the need for expensive court action or mediation.
Our team undertakes all the necessary checks to ensure you have adequate reason to report an individual. We also deal with preparing all the necessary ownership proofs that are required when you report a person for trademark infringement. This makes for a seamless and unequivocal reporting and resolution process.
Should you need support to reapply for registration of your trademark or guidance on any other aspect of intellectual property, we can assist with that too. Speak with the experts at IP Guardian today to learn more on 02 9071 0130.
Registered Patent and Trade Mark Attorney with significant experience obtaining all forms of registered intellectual property. I hold a Bachelor of Science in Engineering, a Masters of Business Administration and a Masters of Intellectual Property. I’m passionate about showing my clients how they can protect their brands through trademark registrations.
I found them online and initially I was bit hesitant to talk to them about my problem but when I spoke to Barry, I felt more comfortable, and he gave me all the information and advice I wanted without even thinking that I am going to give him business or not. Finally, I went with them, and they made the entire process so smooth and easy for me. john was keeping us updated with each step he was doing. I would recommend these guys for any patent or trademark related service.
I would like to express my thanks to Barry and his team at IP Guardian in Sydney for their assistance with our recent Trademark application. Barry was highly professional, readily available throughout the process and clearly communicated expectations. Barry even helped us refine our application so that we had a greater chance of success which was very much appreciated to avoid extra costs. I would highly recommend Ip Guardian for all your Trademark and Intellectual Property needs.
Barry, last week, you and your professional team, made my year (or probably my next 21 years). So thank you so much for your executive, calm yet very effective actions under extream pressure. Elias Hajjar, Director, TROLLEYON PTY LTD
Informative, understood the business, what it needed and answered questions in a friendly and approachable manner. Easy decision to continue working with IPGuardian for future trademarking
From the day I contacted Barry Meskin until now with my silly amateur questions, he has been nothing short of amazing. I actually NEVER leave reviews anywhere, but I felt the need to do so for Barry and his team. I myself am a tradie, so I felt intimidated speaking to an attorney. But the second I spoke to him on the phone, he made me feel right at home. Never pressured me into any decisions, yet when I decided to go ahead with him, he delivered what I needed much quicker than what I was expecting. I cannot speak highly enough of him and recommend his services 100%.
The team at IP Guardian have made the process extremely straight forward and easy for us to understand exactly what was required. I will highly recommend to our clients who need help with IP.
I have dealt with Barry over the years, his advice and experience has helped me greatly. Looking for to working with him and his team again. Maher.
IP Guardian helps protect words, symbols, letters, numbers, names, signatures, phrases, sounds, shapes and smells. Yes, I said smells.
We've had the pleasure to work closely with Barry for many years. He has been exceptional to deal with and has a keen focus in providing a commercial led IP "go to market" strategy for start-ups and well known brands. Makes it easy and always advises on different ways to navigate through the IP process.
Barry Meskin @ IP Guardian is an experienced and extremely knowledgeable expert in the domain of intellectual property, patents and trademarks. In addition he has been extremely responsive and very professional in all our dealings. I wholeheartedly recommend Barry's services to any business or anyone seeking advice in this area - great quality and great value.