
How to Stop Someone from Using Your Trade Mark in Australia: A Step-by-Step Guide to Stop Trade Mark Infringement
How to Stop Someone from Using Your Trade Mark in Australia: A Step-by-Step Guide to Stop Trade Mark Infringement
Trade mark registrations protect your brand. But what happens if someone uses your trade mark or a very similar mark without permission? Unauthorized use can confuse your customers and harm your business. In this article, we have set out steps to stop trade mark misuse, legal remedies for trade mark infringement, and how to prevent unauthorised trade mark use in Australia.
1. Verify Your Trade Mark Rights in Australia
The first step is to confirm that your trade mark is registered with IP Australia. Registration gives you exclusive rights to use the trade mark for specific goods and services within Australia. If your trade mark is unregistered, your legal options may be limited to the Australian Consumer Law or common law actions, like passing off, which require proving your brand’s reputation and the damage caused by the infringement.
A registered trade mark simplifies enforcement and gives you a stronger legal position.
2. Gather Evidence of Trade Mark Infringement
Strong evidence is critical to building a successful trade mark infringement case. Collect:
- Visual Proof: Take screenshots, photos, or obtain physical samples showing the unauthorized use of your trade mark.
- Details of Use: Note when, where, and how the trade mark is being used (e.g., on product packaging, websites, or advertisements).
- Impact on Your Business: Document evidence of harm, such as customer confusion, loss of sales, or reputational damage.
In any evidence you gather, ensure you capture the 5 Ws of the infringing activity – What is happening, When was it occurring and when you recorded it, Who is responsible and who is recording it and Where is the infringement occurring and Where did you obtain the evidence from.
This evidence will strengthen your position in negotiations or legal proceedings.
3. Draft a Cease-and-Desist Letter (Carefully!)
In many cases, a cease-and-desist letter can resolve the issue without needing to go to court. The letter should:
- Clearly outline your registered trade mark details.
- Explain how the infringer’s actions violate your rights under the Trade Marks Act 1995.
- Demand that they stop using your trade mark immediately.
Be careful when drafting the letter. Australian law prohibits unjustified threats of trade mark infringement, which could lead to counterclaims against you. To minimise this risk, consult a trade mark attorney who can help you prepare a legally sound notice.
4. File a Trade Mark Infringement Claim
If the infringer refuses to comply, you may need to take legal action. Some things to consider are:
What court to file the infringement claim?
Trade mark infringement disputes may be heard in the Federal Court, Federal Circuit Court and supreme courts of each Australian state and territory. Most of the time, cases are heard in the Federal Court.
What do you need to establish a trade mark infringement claim?
To prove infringement, you’ll need to show:
- The infringer used a sign that is substantially identical or deceptively similar to your registered trade mark.
- The use occurred on goods or services that are either:
- Covered by your trade mark registration; or
- Similar or Closely related to your registered goods or services.
For well-known trade marks, unauthorized use may constitute infringement even on unrelated goods or services if it creates a perceived connection with your brand.
What Remedies Are Available for Trade Mark Infringement?
If you succeed in your claim, the court may grant:
- Injunctions to stop the infringing activity.
- Damages or account of profits for financial losses or profits gained by the infringer.
- Destruction Orders requiring the infringing goods to be destroyed.
- Additional Damages in cases of deliberate or flagrant infringement.
What are some common defenses to Trade Mark Infringement?
There are several defenses available to alleged infringers:
- Good Faith Use: Using a name, business name, or geographic location in good faith.
- Descriptive Use: Using the trade mark descriptively to indicate qualities like origin or purpose.
- Comparative Advertising: Fair use for comparing products or services.
- Prior Use: Continuous use of the trade mark before the owner’s application.
- Consent: The registered trade mark owner authorized the use.
Each of these defences has limitations. Consult a trade mark lawyer to ensure you receive expert guidance tailored to your situation, helping you navigate the complexities of the law effectively.
5. Act Fast to Protect Your Trade Mark
The statute of limitations for trade mark infringement actions in most Australian states is six years from the first infringing act, except in the Northern Territory, where it is three years. Acting promptly ensures you can enforce your rights and minimize damage to your business.
6. Prevent Future Trade Mark Infringements
Prevention is better than cure. Use a trade mark monitoring service to identify potential infringements early. Monitoring tools can alert you to unauthorized registrations or use, allowing you to act quickly. Halfords IP offers tailored Trade Mark Watch Services to help Australian businesses protect their intellectual property.
Get Professional Help
Stopping trade mark infringement can be a complex process, requiring careful evidence gathering, strategic communication, and legal expertise. Halfords IP specializes in strategic trade mark enforcement advice, offering services like: preparing cease-and-desist letters, handling trade mark infringement matters, and monitoring trade marks to prevent future issues. For further information or assistance, contact Aparna Watal.
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