Trade Mark Infringement

If you have received a letter of demand claiming you have engaged in Trade Mark infringement, or conversely if you believe that your own Trade Mark rights are being infringed, Y Intellectual Property can assist you with formulating an effective defence or enforcement strategy to meet your commercial objectives. Trade Mark infringement claims are one of the most common areas of dispute in IP are governed by the Trade Marks Act 1995 (Cth) and a wide body of interpretative case law which needs to be well understood in order to achieve the best outcome for your business. If you believe that your Trade Mark has been infringed or have found yourself on the receiving end of an infringement claim, we can help navigate the law and assist you in achieving a commercially sensible outcome for your business whilst ensuring your legitimate trade mark rights are protected. Discuss your needs with us today.

What is a Trade Mark?

A Trade Mark is anything that signifies and distinguishes a trader’s goods or services from other traders. This can be anything significant enough to be called a sign of differentiation, including letters, words, names, numbers, signatures, brands, labels, packaging shapes and sizes, colours, sounds, scents and more. Some Trade Marks are easier to protect than others, however, this all depends on the circumstances surrounding the infringement. With correct registration and legal foundation, a Trade Mark can ensure its owner has exclusive legal right to use, create with, and authorise others to use it.

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I’ve Received A Letter from A Lawyer Claiming I Have Infringed A Trade Mark. What Should I Do?

Receiving a letter of demand from a lawyer can be extremely daunting. Your best course of action is not to panic and contact us immediately. Sometimes the claim may have merit, other times it may be completely frivolous and unjustified. Regardless of the situation, we can create intelligent strategic options that help you respond in the best way possible. We aim to achieve a fast and cost-effective resolution so you can get back to business. If a short time frame has been provided for you to respond, we can request further time to ensure you are fully advised. There are costs penalties which can be applied to litigants (and their lawyers) if legal proceedings are commenced too quickly before the other side has had a chance to be advised or respond.

How Do I Know If Someone Is Infringing My Trade Mark Rights?

There are several ways a Trade Mark may be infringed, which are covered under s120 of the Trade Marks Act 1995. To establish Trade Mark infringement, you must be able to show that:

The offending Trade Mark is identical, substantially identical or deceptively similar to your Trade Mark. If the Trade Marks are the same, this is fairly straightforward, however, it becomes more complicated where a Trade Mark may be phonetically similar, partly similar or convey the same idea as a Trade Mark. Where that is the case, some professional guidance may be needed.

If the Trade Mark can be demonstrated to be a well-known or famous Trade Mark in Australia, then the same proximity between the goods and services will not be needed, and Trade Mark infringement rights could extend beyond the goods or services for which the Trade Mark is known, even if unrelated if the use of that sign is likely to indicate a connection with that brand and would be likely to adversely affect the interests of the owner of the famous Trade Mark.

The offending mark is being used as a Trade Mark Infringement will not take place where a Trade Marked term is being used in a descriptive sense and not strictly as a badge of origin to denote a particular product or service. Again, there are some grey areas of Trade Mark use which may require further guidance. Some examples include use of a Trade Marked term as a Google ad word or keyword or use of a Trade Mark as the name of a song or a literary work.

The goods or services for which the offending Trade Mark is being used must be similar or closely related to your goods and services. For instance, if you owned the Trade Mark BLUE BALLOON for event management services, you might not be able to stop someone using that Trade Mark for a brand of toothpaste. However, you may be able to stop someone from using it for services or products which might commonly be associated with the provision of event management services, even if you don’t have those specifically covered by your Trade Mark.

Am I Allowed to Parallel Import Trade Marked Products into Australia?

There are provisions in s123 of the Trade Marks Act which permit the sale and distribution of parallel imported (or grey) products into Australia (for instance, products made by the Trade Mark owner for a foreign market which are brought into Australia). However, the position on parallel imports has been muddied by the Full Federal Court decision in the Paul’s Warehouse case. Therefore if you are planning on bringing in parallel imported products into Australia, we recommend you obtain legal advice before doing so.

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What Defences Are Available for Trade Mark Infringement?

There are several potential defences available to infringement, all of which should be fully explored in the event of infringement:

Copyright Infringement
Demonstrating that use of the infringing mark is not likely to deceive or cause confusion. This defence however does not apply to identical Trade Marks or well-known Trade Marks.
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The person would be entitled to register their Trade Mark in their own right. This is particularly useful where you have used your Trade Mark first or concurrently with the registered Trade Mark but have not applied for registration

Copyright Infringement

If the goods or services on which the Trade Mark have been used are specifically excluded or disclaimed from the infringing Trade Mark.

Copyright Infringement

Using your own name or the name of your place of business.

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The name is being used descriptively to indicate some feature of the product or service.

Copyright Infringement

The Trade Mark is used to indicate the purpose of goods or services (eg. where describing spare parts for a particular brand of car).

Copyright Infringement
A right to use the Trade Mark has been granted (for instance, under license).

What Are the Penalties for Infringing A Trade Mark?

The Federal Court and Federal Circuit Courts have wide power to grant several remedies to infringers, including:

Damages.

These are designed to compensate the Trade Mark owner for loss they can demonstrate has been suffered. However the courts also now have the power to award additional (punitive) damages where the infringer has acted flagrantly or where there is a need to deter other infringers.

Account of profits.

As an alternative to damages, the Trade Mark owner can seek return of the profits made by the infringer which are attributable to the infringement.

Injunctions.

These are binding court orders which prohibit the infringer from doing activities which would further the infringement.

Contact Y Intellectual Property Today

If you have received a Trade Mark infringement letter or would like to know whether your rights have been infringed and how they can be enforced, please contact Andrew Petale. Contact him at info@yiplegal.com.au or submit your enquiry through our online form on this page. We will reply as soon as possible to discuss your defence or enforcement strategy.