Trademark infringement of a registered trademark has taken place when a rival or other business employs a symbol which is significantly similar or deceptively comparable to your registered mark.
The infringing party will need to have utilised the mark on products or services that come under the same, or comparable types of products or services in the same or associated class that your trademark is registered.
There is no need to establish reputation to have your rights enforced when your trademark is registered.
Your rights are protected under the Trade Marks Act 1995, but there are some additional laws you should be aware of, such as the Australian Consumer Law (formerly Trade Practices Act) that addresses misleading and deceptive conduct. You can also take action under common law (passing off). We have trademark litigation lawyers who can offer advice on this matter.
Trademark Infringement Examples
Some examples of trademark infringement might be a footwear company called Zike, or a fast food restaurant called McDonnalls, or a company using your registered trademark in their domain name. If someone is using your brand or registered trademark then this could be trademark infringement and you should contact us immediately.
Unregistered Trademark Infringement
Should your trademark be unregistered, passing off, misleading and deceptive conduct are your only course of action for enforcing your rights. Your reputation will be called into action in these types of trade mark actions. This is not the case for and infringement of registered trademarks as outlined in Trade Marks Act 1995. Gathering and establishing evidence of reputation will increase cost and time to make your infringement claim.
Is it possible for trade mark infringement to take place with domain names/URLs? In some situations trade mark infringement can also take place online, where a web address is registered which is the same as or confusingly like your trade mark.
Furthermore, if the violator has registered the website domain in ‘bad faith’ ( such as, to fool buyers into thinking the website is associated with the trade mark holder or to take advantage of redirected traffic ) then legal action can be taken to convert the web address to the trade mark owner under the Uniform Dispute Resolution Policy (UDRP).
Carrying out an extensive trade mark search will reduce the risk of violating any current registered trade marks or brand name rights. After that you can register your trade marks, which provides you with a defence against any future trade mark violation claims that might be made against you by your rivals.
On the other hand, owning your trade mark registration double as a great way of discouraging rivals from utilizing your brand name and/or allows you to enforce your registered trade mark legal rights against them.
There are two ways of dealing with infringement of your trademark or a claim of infringement against you by some other individual.
In some instances, an aggressive trade mark litigation approach might be the best solution, but the more suitable commercial end result (especially when defending a claim of trade mark violation) is the make use of alternative dispute resolution (ADR). These ADR methods include negotiation, mediation or conciliation to bring about effective communication between the participants to come to a resolution to the claim. ADR can be arranged privately or it might be ordered by the court.
ADR is the most viable option in all trademark infringement claims as it will minimise costs and legal liability by preventing a potential lawsuit. Trade mark conflicts and litigation are often an undesirable interruption from your everyday business.
Trademark Infringement Litigation
Even though we usually facilitate settlement where suitable, in some cases the use of an aggressive trade mark litigation approach is inevitable or an essential commercial strategy. We provide you with a clear roadmap at the beginning of litigation that shows how the issue might progress and included are the timelines and costs associated with every step. You will be fully informed about the progress and costs at every step of the litigation process.
Our trade mark lawyers have substantial experience in intellectual property and have litigated in a number of jurisdictions including Federal Court. We will lay out a strategy best suited for your needs and the needs of your business.
We will help to:
- Preserve your market share produced by your brand integrity
- Secure your marketplace credibility
- Prevent customer brand confusion
- Improve the worth of your trade mark and business
What has to be proven?
You have to clearly show that your IP rights in fact exist under the law in order to develop legal action against a supposed infringer.
You also need to prove that:
- You hold those legal rights or are otherwise qualified to act on the owner’s behalf ; for instance, as the exclusive licensee of the rights
- The specific property in regard to those rights in fact exists
- The infringing party’s product or service is a copy of the entire or a significant component of the owner’s product or service
- The infringing party manufactured their product without the licence or authority of the holder of the IP legal rights
There are two ways for a trademark infringement to arise:
- A rival is utilising the exact or very similar trade mark to yours.
- A rival thinks you are utilising a trade mark that is exactly or very similar to theirs.
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