If you are being threatened with trademark infringement or your trademark rights are being infringed, we can come up with an effective strategy to meet your objectives.
I’ve received a letter from a lawyer claiming I have infringed a trademark. What should I do?
Receiving a letter of demand from a lawyer can be extremely daunting. The best recourse is not to panic and contact us right away. Sometimes the claim may have merit, other times it may be completely frivolous and unjustified. Either way, we can set you up with the right strategic options to best respond with a view to coming up with 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 trademark rights?
There are a number of ways a trademark may be infringed, which are covered under s120 of the Trade Marks Act 1995. To establish trademark infringement, you must be able to show that:
(a) the offending trademark is identical, substantially identical or deceptively similar to your trademark. If the trademarks are the same, this is fairly straightforward, however it becomes more complicated where a trademark may be phonetically similar, partly similar or convey the same idea as a trademark. Where that is the case, some professional guidance may be needed.
(b) the offending mark is being used as a trademark. Infringement will not take place where a trademarked 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 trademark use which may require further guidance. Some examples include use of a trademarked term as a Google adword or keyword, or use of a trademark as the name of a song or a literary work.
(c) the goods or services for which the offending trademark is being used must be similar or closely related to your goods and services. For instance, if you owned the trademark BLUE BALLOON for event management services, you might not be able to stop someone using that trademark 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 trademark.
(d) if the trademark can be demonstrated to be a well-known or famous trademark in Australia, then the same proximity between the goods and services will not be needed, and trademark infringement rights could extend beyond the goods or services for which the trademark is known, even if unrelated, if 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 trademark.
Am I allowed to parallel import trademarked 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 trademark 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, it is recommend that you obtain legal advice before doing so.
What defences are available for trademark infringement?
There are a number of potential defences available to infringement, all of which should be fully explored:
(a) demonstrating that use of the infringing mark is not likely to deceive or cause confusion. This defence however does not apply to identical trademarks or well-known trademarks.
(b) using your own name or the name of your place of business.
(c) the name is being used descriptively to indicate some feature of the product or service.
(d) the trademark is used to indicate the purpose of goods or services (eg. where describing spare parts for a particular brand of car).
(e) a right to use the trademark has been granted (for instance, under license).
(f) the person would be entitled to register their trademark in their own right. This is particularly useful where you have used your trademark first or concurrently with the registered trademark but have not applied for registration.
(g) if the goods or services on which the trademark have been used are specifically excluded or disclaimed from the infringing trademark.
What are the penalties for infringing a trademark?
The Federal Court and Federal Circuit Courts have wide power to grant a number of remedies to infringers, including:
(a) Damages. These are designed to compensate the trademark 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.
(b) Account of profits. As an alternative to damages, the trademark owner can seek return of the profits made by the infringer which are attributable to the infringement.
(c) Injunctions. These are binding court orders which prohibit the infringer from doing activities which would further the infringement.
If you would have received an infringement letter or would like to know whether your rights have been infringed and how then can be enforced, please contact Andrew Petale at email@example.com or submit your enquiry through our online form on this page. We will come back to you promptly to discuss your defence or enforcement strategy.