Introduction

The significance of trademark registration cannot be overstated for business owners aiming to establish exclusive rights for their brand in connection with specific goods and services. Business owners must remain proactive and vigilant against potential trademark infringements and respond promptly to preserve their rights.

Understanding Trademark Infringement

Trademark infringement occurs when an unauthorized party violates the exclusive rights attached to a trademark. This unauthorized use happens when a sign is either substantially identical or misleadingly like the registered trademark.

With trademark infringements on the rise, it is imperative for business owners to actively monitor the market to prevent third parties from exploiting their intellectual property (IP) rights and to promptly address any suspected infringements.

Legal Recourse for Trademark Infringement

Under Section 120 of the Trade Marks Act 1995 (Cth) (‘the Act’), trade mark infringement includes the use of a sign that is identical or deceptively like a registered mark in connection with goods and services covered by the registration.

For a claim of trade mark infringement to be valid, the allegedly infringing mark must be substantially similar or misleadingly similar and used in connection with goods or services unrelated to those covered by the registered trade mark.

1. Substantially Similar:

Conduct a thorough analysis, focusing on the uniqueness of each mark.

The overall impression should differ significantly from the registered mark.

2.     Misleadingly Similar:

Involves a test based on the recollection of an ordinary person.

Ensures the mark does not create confusion or misleading impressions.

3.       Related Goods/Services:

Assessed based on the nature, characteristics, origin, and purpose of the goods/services.

Considers whether they are provided by a different business or person and are not regarded as the same by consumers.

Addressing Trademark Infringement

Business owners can address trademark infringement through the institution of court proceedings, or out-of-court settlements. To initiate legal action, they must prove the validity of their IP rights by demonstrating registration, ownership, unauthorized use, and lack of authority for the infringing party.

1. Cease and Desist Letters:

A preliminary step to stop the use of the infringing trade mark.

May be followed by mediation or arbitration to resolve disputes outside the courts.

2.       Court Litigation:

Expensive but necessary if amicable resolutions are not achievable.

Can result in injunctions, damages, and penalties for the infringing party.

Often the first step is to provide written notice to the infringing party. Rose Litigation Lawyers can assist in reviewing the situation, providing advice on recommended next steps and a way forward to deal with it appropriately.

Defences for Inadvertent Trademark Infringement

Inadvertent infringers can use defences outlined in the Act, including good faith use, descriptive use, comparative advertising, and having the right to use the trade mark. Prior use of an unregistered trade mark can also serve as a defence.

Trademark Infringement on the Internet

Trade mark infringement cases are prevalent online, involving meta tags, Google AdWords, domain names, and cybersquatting.

1. Meta Tags: Infringement occurs when a trade mark is used in meta tags to manipulate search engine rankings.
2. Google AdWords: Use of a competitor’s trade mark in sponsored ads can lead to confusion.
3. Domain Names: Registration of a domain name identical or similar to a trademark may lead to infringement.
4. Cybersquatting: Purchasing domain names similar to registered trademark for malicious purposes.
5. Social Media: Protecting trademark rights on social media involves reporting infringing content through platform interfaces.

Conclusion

Proactively navigating trademark infringement is essential for business owners.

From ensuring a unique trademark from the beginning to addressing infringement through legal or alternative means, protecting intellectual property is vital for sustained business success. Seeking guidance from intellectual property professionals can help business owners make informed decisions and safeguard their brands in an evolving marketplace.

If your trademark is being infringed upon, or you suspect it may be, request an obligation-free consultation today!

The content of this publication is intended to provide a summary and commentary only. It is not intended to be comprehensive nor does it constitute legal advice, and has been prepared based on applicable legislation and case authority at the date of publication. You should seek legal advice on specific circumstances before taking any action.