Once you are a registered trademark owner, you have the responsibility to protect and defend your trademark against infringement or removal. Your mark is protected under Australian law against other companies using your mark without your explicit permission; neither can another party submit a confusingly similar mark for registration. However, it is up to you to preserve and protect your rights, as well as take action against infringement.
There are a number of common causes of legal action in trademark disputes:
- Another company has infringed on your registered mark
- Another company has undermined your mark in a way that affects your flow of business
- Another company has encroached on Australian trademark infringement standards
- Another party has encroached on state trade practice laws
- Another party has used tactics to dilute the strength of your trademark
- Another party has misappropriated your trademark
Trademark infringement usually involves cases of confusing similarity between marks, replicated marks, or the dilution of marks.
Confusing Trademark Similarities
Your registered trademark can be infringed by another party using a trademark that is likely to confuse or mislead consumers with its similarity to your own. The confusion between the two marks must be probable, not possible, for this to constitute infringement. If you believe that another company has committed infringement, you must be able to show that consumers within your market are likely to be confused or misled about the specific products and services that the two marks represent.
Similarly, a counterfeit mark is a mark that is identical to, or confusingly similar with, a registered trademark. If another company counterfeits your mark to signify identical products and services, this is infringement on your trademark rights. To truly constitute infringement, however, the other company must have knowingly produced the counterfeit mark for the purpose of selling those same goods and services.
If, however, another company claims that your mark infringes on their own, there are two defences that you can offer. You can claim that confusion between the two marks is, in fact, not likely. You could also claim that while the two marks may be similar, the other company has misrepresented themselves, or that their own mark is defective.
The dilution of a trademark is the reduction of the unique nature of a mark, or the lessening of its impact. The success of a trademark is dependent on its ability to be recognisable to consumers. Trademark dilution, unlike trademark confusion, does not require the infringing mark to be used for the same types of goods and services, and nor does it require the infringing mark to cause confusion amongst consumers. In order to make a case for trademark dilution, you need to be able to show that another, similar mark has caused the lessening of the impact and power of your own registered mark. Your trademark is used as a means of recognition for your products and services: when another, similar mark enters the marketplace, the strength of your mark could be considered diluted. You could argue that your products and services are no longer as identifiable or distinguishable as a result of this new, similar mark. Under trademark law, dilution is prohibited: the infringing party cannot unfairly profit due to association with your unique mark and established business reputation.
In order to create a case for infringement based on dilution, you need to show that your registered trademark is truly unique. This is part of the reason why, before you even apply for registration, you should design a mark that is strong, distinguishable, and different from any other mark already operating within the marketplace. Much like in a case of confusion, you need to be able to prove that the instance of dilution is probable rather than possible.
If you’re on the other end of the case, and another company is accusing your own of trademark dilution, there are a number of defences that you could use.
- The Affirmative Defence: this defence questions the other company’s legal right to take action against you. Rather than refuting the truth of the other company’s claim, you can argue that the other company’s trademark has become generic rather than distinct. In this defence, you can argue that you have only made fair use of the other company’s mark, and that your mark does not cause unfair competition between your companies.
- You could, alternatively, argue that the other company has acted in an unfair or deceptive way. You could, in turn, charge the other company with trademark misuse, by claiming that the company used their mark in a way that went against the policy that permitted the mark to be registered in the beginning.
- You might claim that the other company used the mark in question fraudulently. You could argue that the other company encroached upon laws designed to prevent unlawful restraints, price fixing, and monopolies.
Whether you’ve been accused of infringement or you believe that another company has infringed on your rights, you should seek the advice of a professional. Contact your local trademark attorney for sound, professional information on the steps you can take to protect yourself against infringement or legal action by another party.
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.