To take legal action against trademark infringement in Australia, you must be able to prove that your intellectual property rights exist. Before you can take action against an someone who has committed internet trademark infringement, you need to prove that:
- You are the owner of the Australian trademark rights or you have been given leave to act on behalf of the owner; for example, if you are a licensee of the person / company filing trademark registration
- The exact property associated with those rights truly exists
- The infringing party’s product or property is a replica of the entire or a substantial part of the owner’s business name and has conducted business name infringement
- The infringing party created this product without first receiving a license or authority from the IP owner.
To enforce action against trademark infringement in Australia you need to prove that:
- The mark causing possible infringement is being used in association to identical or similar classes of goods and services as your own
- The infringing trademark is similar enough to your own trademark to cause consumer confusion
Trademark Infringement in Australia – Proving That Your Rights Exist
While some rights to tangible property can last indefinitely, intellectual property rights can cease. In order to guarantee the indefinite existence of your trademark rights, you need to ensure that you pay your renewal fees in a timely manner. Your trademark registration can be renewed on an indefinite basis and your rights will continue to be your defence against infringement, so long as your registration is current.
Once your registration has expired, other parties are free to use your trademark or attempt to register it as their own at IP Australia without fear of legal ramifications. Generally, trademark registration lasts for 10 years in Australia.
The initial step to any proposed legal action is to ensure that your intellectual property rights truly exist in reference to the relevant goods or services. This is a simple process, especially where your intellectual property has been registered as a trademark.
You must be able to show your copy of your registration certificate to prove that your rights exist and that your registration is current.
Trademark Infringement in Australia – Your Rights as a Trademark Owner
Only the owner of a trademark, or someone entitled to act on the owner’s behalf, such as a licensee, can take legal action against infringing parties.
To take action against trademark infringement in Australia, you must prove that you are the true owner of the rights. Proving your ownership is generally straightforward.
Should you wish for someone to act on your behalf, they must be able to prove that there were written assignments of that IP interest from the owner of the trademark.
You must also be able to prove transfer of titles with full documentation.
Trademark Infringement in Australia – What Can You Protect?
During the case proceedings, the products and services related to your trademark need to be precisely identified.
It is reasonably simple to prove the precise nature of the intellectual property subject to registration. In the case of a trademark, your mark will be registered under a number of goods and service classes in order to identify the scope of your protection.
You can also use your consistent and continued use of your trademark in relation to your products to establish the scope of your mark.
Trademark Infringement in Australia – Partial Protection
In some cases of trademark infringement in Australia, only part of your product is protected.
If you are using your trademark in relation to goods and services that are not included under your registration, you might find that you cannot protect your trademark under those classes. This means that another trader might use a similar mark in relation to goods and services that you have not included in your registration.
Talk to a trademark professional about the full scope of your trademark protection in order to ensure that your registration is customised to protect all of your goods and services. You should also speak to a professional if you wish to add further classes of goods and services to your current registration.
Trademark Infringement in Australia – Establishing Infringement
To establish trademark infringement in Australia, you need to prove that the infringing party has replicated a part of or the entirety of your trademark. This is only self-evident in some cases: in others, you will need to provide further evidence.
Your trademark might contain an image of a cat with the logo CATFEAST, and be used on cans of cat food. The infringing mark might contain a similar image of a cat, be used on the same product, and use the logo KATFEAST. A brief visual comparison of the two marks can easily prove that one is the copy of another.
Cases of trademark infringement are not always so clear. An infringing mark might only be similar to yours in a certain element: or perhaps the trademark in question is a sound, scent, or shape that you believe is similar to your own.
You might decide to consult a trademark professional in order to adequately identify the infringing elements of the offending mark, and to compare those with the tailored scope of your protection as offered by your registration.
Trademark Infringement in Australia – Authorised Infringement
During the prosecution, you will have to prove that the infringing party did not have your permission or consent to use your trademark, unless the infringing party does not claim to have permission.
This is not always a simple task.
It is much easier to prove that the infringing party did not have permission if you keep a documented system for granting licenses to licensees, along with other personnel to implement this system.
With a system in place, you can claim that you have search through your files without finding any record of requests made by the infringing party for a license, and prove that the license was never granted.
Generally, this process will satisfy the court.
You are responsible for protecting your own intellectual property rights. Ensure that you continually monitor the marketplace and defend your rights where necessary. While IP Australia grants trademark registration, they are not responsible for enforcing your rights upon infringers. You should consult a trademark professional for advice should you feel that your intellectual property rights are under threat.
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.
Disclaimer – 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.