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:
- Use; and
- 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.
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.
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.