• Commercial Law

    Commercial Law

    We are business people as much as we are lawyers. We will take care of the legal documents so you can confidently run your business.
    As your business grows, its risk profile and governance challenges will change. We partner with our clients over the long term to ensure they are in the driver’s seat for success.

  • Dispute Resolution

    Dispute Resolution

    We are in your corner when the going gets tough. Having resolved over 6,500 disputes for business owners have seen it all before.

    Whether you need a skilled negotiator or a fearless litigator, we specialise in delivering commercial results when:

    Customers refuse to pay;
    Suppliers let you down; and
    Business Partners do the wrong thing.

  • Employment & Safety

    Employment & Safety

    The biggest challenge for any business owner, is managing their employees.

    A difficult employee can make you question why you got into business in the first place and be toxic to your team morale.

    We deliver proactive solutions to manage your team via employment contracts, policies and procedures as well as handling employment disputes when they arise.

  • Property & Construction

    Property & Construction

    Property is the key most wealth in Australia.  Whether you are buying, selling, leasing or developing property, you need a lawyer you can count on.

    We can advise on the whole property development process from obtaining finance to development approvals, construction and sale or leasing.

    We also act for the Master Builders Victoria and have extensive expertise in construction contracts and disputes.

  • Family Law

    Family Law

    At Taurus Legal Management we understand the unique challenges clients encounter during family disputes, especially when children are involved. Our family lawyers specialise in handling high-asset cases with a focus on protecting clients wealth, securing their family’s future, and safeguarding the best interests of their children.


When is a Trademark Infringed?

Under the Trade Marks Act 1995 (Cth) (Act), when you register a trademark you are granted the exclusive right to:

  1. Use; and
  2.  Authorise others to use that trademark in relation to the goods and services in which it is registered.

A trademark will be infringed when these rights are interfered with. The interference will usually come from another person or business using a mark which is ‘substantially identical’, or deceptively similar to, your registered trademark in the same or closely related goods or services.

Substantially Identical

When determining whether a mark is substantially identical, you must closely examine the two marks side by side. You must then look at the similarities and differences of the marks and the essential features of them. If the other mark contains a lot of similarities, particularly if the similarities are in the main features of the mark, there may be trademark infringement.

Deceptively Similar

If a trademark does not reach the threshold of being substantially identical, it may nevertheless be deceptively similar. A mark will be deceptively similar where it “so nearly resembles that other trademark that it is likely to deceive or cause confusion”.

This test is quite different in that it will require you to examine the appearance of the two marks and the effect they have on consumers. It is particularly helpful in this test if you can point to customers who have been deceived into thinking the other mark was the same or related to your business. 

Well Known Trademarks

Under the Act, well-known trademarks are afforded greater protection as they have acquired significant value as a result of prolonged use. To infringe a registered trademark the other mark need not be in the same or related class of goods or services. Rather, a well-known trademark will be infringed where the other mark indicates a connection between the goods or services and the owner of the well-known trademark.

What if your Trademark is being Infringed 

If your trademark is being infringed, it is important to act quickly.

As a first step, we suggest seeking legal advice to determine whether your trademark is actually being infringed. Not only is it important to consider infringement, but it is important to consider the possible defences of the other party. There is no point pursuing the other party if it is clear they have a strong defence which will stop the Court making an order in your favour. 

However, if your trademark is being infringed, we suggest having a letter sent to the other party asking that they immediately cease and desist from the infringing conduct. As part of this letter, you may request the other party deliver up to you all of the documents featuring the infringing mark, such as pamphlets, posters or business cards.

If the other party continues with the infringing conduct, you may issue legal proceedings under the Act. These proceedings will usually be issued out of the Federal Circuit Magistrates’ Court who have the power to determine a wide range of matters under the Act. Within three weeks of the claim being filed, the Court will usually list the matter for a Court hearing where the Judge will set out a timetable for the conduct of the proceeding. However, you should be aware that the timetable set out will vary depending on the availability of the parties and the Court. This means the party’s legal costs and length of time to a final hearing will vary. 

How to Avoid Trademark Infringement

There is no doubt you will want to avoid trademark infringement. Although, once you establish your business and trademark, you may feel as though you’re in too deep to change your mark. To avoid this, you should see if the logo or name you want to trademark is being used prior to investing a lot of time and money in developing your branding.

We suggest you:

  • Conduct a search of registered and pending trademarks through the IP Australia website. We recommend seeking advice regarding your search as it requires more than simply searching your trademark. You need to conduct a more comprehensive search to see if there are any other trademarks that are deceptively similar. This can include trademarks which are pronounced the same but spelt differently;
  • Conduct a search on the Australian business name register or ASIC company name register. Although these are not themselves trademarks, it will give you a good indication as to whether your trademark is too generic or if your trademark may give rise to other potential claims such as misleading and deceptive conduct or passing off;
  • Conduct a simple Google search and see if your trademark produces any results;
  • Look at trademarks of your major competitors or business’ in your area;
  • If in doubt, seek advice from a trademark expert.


The penalties for trademark infringement can be very high to reflect the seriousness of infringing another business’ brand.

In particular, the Court has the power to award:

  • An account of profits: being profits the infringing party has made as a result of the infringement;
  • Injunction: the Court may order the infringing party be prohibited from continuing to use the mark;
  • Damages: an award of monetary compensation;
  • Additional damages may be awarded if the Court considers it appropriate. The Court is most likely to award additional damages where the infringing party fragrantly continues to use the mark after the infringement was brought to their attention. 

If you need trademark advice or are concerned your trademark is being infringed, please contact an Intellectual Property Lawyer member of  Taurus Legal Management today on (03) 9481 2000.

Posted by Taurus Legal Management