If you are a business owner and suspect an IP breach, it can feel like your entire world is closing in on you.
Your first instincts to make matters right are likely to be fuelled by emotion – anger, hurt and frustration.
Before you engage in behaviour that may damage your good reputation and long-term business success, there are a few things to consider.
IP Australia suggests that you do take action to enforce your rights.
“As the owner of intellectual property (IP) rights, you have a range of options and actions you can take to prevent infringement. It is your responsibility to enforce your IP rights. We will not police your rights or launch legal proceedings on your behalf. Effective enforcement of your IP rights is necessary to maintain their value in legal terms, to deter potential infringers and to retain the ability to attract commercial value. If you suspect your IP rights are being infringed we recommend you contact an IP professional.”
Quick Off the Mark® have years of experience dealing with trademark infringements in Australia and suggests you consider the following before contacting another person alleging they are infringing your rights:
1. Making unfounded allegations can constitute misleading conduct and false representations and can lead to others suing you for the making of groundless threats around legal action for unfounded infringement.
2. Trademark registration is a country-by-country scenario. Finding someone using your “trademark” or IP in another country is not an infringement on your Australian rights. This means it may not be within your legal rights to demand they stop using your brand.
3. Trademarks are registered in connection with goods and services. Infringement can occur when someone without registration uses that trademark (or something confusingly similar) for the same or related activities. For example, if you have registered a name for a make-up range then a person uses the same name for building or architectural services; they will most likely not be infringing your trademark or IP.
4. If a person actually used the trademark before you first used or registered (which ever is the earlier date) and has made continual use, they may have prior rights such that there is no infringement of your trademark rights.
5. If a person is merely using a phrase to describe goods or services this may not be an infringement.
Apart from grounds for action in respect of misleading conduct and/or false representations, section 129 if the Trade Marks Act 1995 (the Act) prescribes that a recipient of a letter of demand that has made legal threats due to alleged infringement that are groundless can actually sue the sender of the letter for making those groundless threats of legal action.
Part 12 of the Act discusses trademark infringement in Australia and section 120 of the Act states:
“A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.”
It is Quick Off the Mark®’s opinion that this is a vital fact. If the ‘sign’ is not used as a trademark it is not infringement.
We have listed some further principles for strategic enforcement of IP rights that may be helpful below.
1 Be ready to act fast
In some cases, urgent interlocutory relief may be needed. For example, if there were counterfeit goods seized by Customs that were pursuant to a Notice of Objection.
If this is needed, there are very tight timeframes to start action that will prevent the release of the suspected infringing goods. In Australia, this must be started within 10 working days of the copyright or trademark owner being notified of a seizure. There are grounds to seek an allowance for extension of a further 10 working days.
The best-case scenario is that within 20 working days of an action being brought, you must obtain a Court order preventing the goods from being released. If this doesn’t happen, the goods may be released to the importer unless they have been voluntarily forfeited
It may also be necessary to seek urgent relief where the infringement is particularly damaging, or is likely to quickly damage your business, reputation or rights. Usually the first step is to issue a letter of demand to an alleged infringer, however, in some instances it’s necessary to seek the court’s assistance very early on.
2 Lodge your Notice of Objection with the Australian Department of Immigration and Border Protection
When you lodge a Notice of Objection with the Australian Department of Immigration and Border Protection you can prevent goods that infringe your trademark and copyright rights from being released into the Australian market.
A Notice of Objection with Customs can be lodged by:
- An authorised user of a mark,
- A registered trademark owner,
- The owner of copyright material, or
- The exclusive licensee.
This process allows for multiple trademarks and copyright material and is effective for four years. After a Notice of Objection has been lodged, and if Customs is aware there are suspected infringing goods being imported into Australia, they have the power to seize the goods for a limited period of time.
In most cases, once the importer receives a legal letter demanding undertakings to stop infringing trademark or IP rights, they will voluntarily forfeit the seized goods.
Proving IP and trademark registration infringement is not a simple process.
If you suspect a breach has happened, Quick Off the Mark® are specialists in trademark law who can help and give you objective advice. Contact us here.
The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs
Quick Off the Mark is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.