As the owner of your trademark, you are responsible in several ways for ensuring that it remains active, is not subject to notices of removal or cancellation – or if it is, to take appropriate action to protect your intellectual property. It is also your responsibility when it comes to protecting your trademark against potential infringements and settling disputes. The Trademark Office, IP Australia, will not monitor or police your rights or help you begin legal proceedings against those who may be in potential infringement of your trademark.
A trademark infringement may occur when another person (without trademark registrations) uses a sign as a trademark that seems similar or the same to one owned by another person in relation to the same or similar products or services. The Trade Marks Act 1995 is the legislation for all aspects of trademarks, with Section 120 detailing the ways in which a ‘sign’ (e.g. an unregistered trademark; a distinctive name, logo, slogan or other ‘brand’) may infringe upon a registered trade mark.
- The sign is substantially identical or deceptively similar to the registered trademark
- The goods or services are closely related or in the same description
- Or, the trade mark is “well known”
Generally, infringement may occur when a person (without registration) uses ‘something’ similar to the registered trademark, where confusion is likely to occur.
A typical infringement occurs when a person starts to use a particular name or logo, which may be similar or even identical to an existing brand that another person believes they have a legitimate or registered claim over. The dispute or infringement arises because the aggrieved party will want to stop the unauthorised use or what they allege as unauthorised use by somebody else.
Are infringements and disputes common?
In the course of our business, we see many disputes arise over trade marks, although legal proceedings around infringements may be less common – around three quarters of the clients we see will appear to have a legal basis to their claims, with around a quarter having no real legitimate argument, although they may feel strongly that they do.
While the legislation about trademark infringement may appear clear cut, trademark disputes can be anything but, and it is easy for trade mark owners to sometimes ‘jump the gun’ and seek to protect their trade mark from a perceived infringement where no infringement actually occurred. It’s important to understand that threatening legal action for trademark infringement, with no grounds to do so, can actually allow the other party grounds to instigate action to prevent such groundless threats.
Trademarks can be emotive representations for people – of their business, of the hard work they put in and their commercial value within the marketplace – and as such can generate strong feelings when someone thinks that is being threatened. This is why it’s important to see advice before taking any action. Getting clear, professional advice from an intellectual property expert will help to prevent any unnecessary and potentially harmful behaviour.
I think my TRADEMARK is being infringed. What should i do?
If you do believe your trademark rights are being infringed, the very first thing you should do is seek professional advice. And, you should do so as soon as becoming aware of that potential infringement. You, as the trademark holder, have some responsibility to ensure damage to your rights and reputation are kept to a minimum. Delaying action can affect financial compensation should the matter require legal proceedings.
A trade marks attorney or industry expert will be able to provide an objective sounding board for your concerns and give you an independent opinion about the validity of your claim. They will also be able to narrow down the scope of the potential infringement and ensure any contact with the alleged infringer will not be viewed as groundless.
Usually the following then occurs:
- Once the information has been assessed, if we discover that you do have a legitimate claim for an infringement of your trademark, we will start by drafting a letter of demand to the alleged infringer. This will state in clear terms your rights in relation to your trademark, the actions the alleged infringer took to potentially breach those rights, and the actions they need to take to stop the breaches from occurring. These letters are non-emotive, and designed for a clear and defined outcome.
- If the matter is resolved then no further action is required. In the event that a dispute continues, then there may be the need for further action to prevent the continued alleged infringement. This could be what’s known as alternative dispute resolution (or ADR). This is essentially the actions that take place between the two parties to try and resolve the issue without resorting to court action. An ADR can be a more efficient, less costly and more satisfactory solution to legal proceedings. If this is not appropriate or does not resolve the issue, then commencement of legal proceedings might be necessary. A registered trademark owner has the right to seek relief, through the relevant courts, from the infringement including an injunction to stop the conduct and also damages or an account of profits.
It is important to remember that by seeking professional advice you are demonstrating that you are being proactive in protecting your rights over your trademark, as well as trying to resolve matters before jumping into what can be unnecessary, costly and time-consuming court proceedings.
I have received a letter of demand. What’s next?
Again, it is very important to get professional advice in this case, rather than taking any action of your own. In the past we have seen clients receive a letter of demand and simply be too upset or worried to respond appropriately. They may agree to certain terms without really understanding the implications, or respond in a way that makes the issue worse than it needs to be. Or, even worse, agree to rebrand and change names only to later find out there was no legal reason for them to have to do so. Once you openly agree to change your name, the other side might rely on that communication if you later ‘change your mind’ based on advice so it is always best to get the advice before responding to such a communication.
We will be able to assess the letter on your behalf, and determine if there are any legitimate claims, as well as assist you with crafting an appropriate response and advise you on any steps that may need to be taken to resolve the issue.
How are letters of demand received or sent by the offending party?
If you are receiving professional advice, then the correspondence between you and the other party will likely be through us via email or, in the case of hard copies of documents, through the post. Discussions about the matter through social media and other forms of communication are strongly advised against but does occur. In occasional circumstances we might suggest a ‘direct’ communication between the parties is appropriate, however, only with proper advice and understanding of the situation.
In terms of court proceedings, generally we will try doing everything possible to avoid going to court as a resolution to your trademark dispute. This means taking on professional advise as soon as you learn about the potential breach (or are accused of one) as well as doing everything in your power to resolve the matter through the right channels. We have a strong focus and history in reaching commercially sensible outcomes based on negotiation for clients to avoid the cost and stress of legal proceedings.
If the matter does end up going to court, it can be a complicated process (some disputes have taken years to resolve) and even if the outcome is in your favour, you will still need to pay what can amount to hefty legal fees. After hearing a trademark infringement case (if found in favour of the person alleging infringement has occurred), as a general rule the court may award relief as set out in section 126 of the Trade Marks Act 1995 in terms of:
- an injunction against the infringer, who will then be made to cease using the relevant sign
- grant the registered trademark owner damages or an account of profits under certain circumstances
Costs may also be awarded, subject to all circumstances. However, often a costs award does not recover all of the actual costs incurred by the party. The resolution of your matter in court should be the last possible option you consider, and luckily for most people dealing with potential trademark infringements, disputes can be settled before it reaches this point.
One of the best ways to guard against potential trademark infringements and disputes, or to protect yourself from potential infringements is to have an infringement strategy created by a professional. This can be as simple or as complex as you wish, but generally it is a good idea to talk to your trade marks attorney when you’re considering registering a trademark, so they will be able to tell you your responsibilities as the rightful owner, and set up a strategy with you in the event of any disputes arising in the future concerning your trademark.
Just keep in mind that while you do need to remain vigilant for potential infringements, you do not need to deal with the matter by yourself – getting professional, expert advice can save you a lot of hassle and money in the long run.
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.