Four Tips to Prove Trade Mark Infringement

Emily Young

• 9 June 2021
• 2 August 2021
• 5 min read

Having a registered trade mark is an essential aspect of your business’ intellectual property (IP). The key benefit of having a trade mark is that it gives you exclusive rights to use your trade mark and allows you to enforce your rights over any infringing trade marks. However, proving trade mark infringement can be a complex process. This is mainly because it can be difficult to provide evidence that somebody has infringed your trade mark. This article will take you through four key things to consider when proving a breach of your trade mark. 

1. Know What Trade Mark Infringement Is

Proving that somebody has infringed your trade mark is not always a straightforward process. To demonstrate that a person has breached your trade mark, you must be able to prove that the infringing trade mark is:

• sufficiently similar to your trade mark to cause consumer confusion relating to the trade mark and its owner; and
• used in a similar category of goods or services that your trade mark operates under.

Once you understand what constitutes trade mark infringement, you will be able to gather evidence to show that somebody has infringed your trade mark.

2. Prove Your Rights to Your Trade Mark

To prove that somebody has infringed your trade mark, you will firstly need to show that the trade mark is yours or that you have the rights to use it (for example, as a licensee). This is a relatively simple process because you will merely need to provide evidence that you have a registered trade mark. This may include evidence of the trade mark register or a licensing agreement. If you fail to renew your trade mark, your trade mark will expire, so you will be required to demonstrate that your trade mark is still in force.

You may also need to provide evidence that the party who is infringing on your trade mark does not have the rights to use your trade mark. For example, if the infringing party claims that they had consent or a license to use your trade mark, you will need to prove otherwise. This is why you should maintain an IP management system recording of everyone who uses your trade marks.

3. Provide Evidence of Trade Mark Infringement

The evidence you should provide to demonstrate that somebody infringed your trade mark will depend on the form of your trade mark. For example, if your trade mark is a logo and the infringing trade mark is nearly identical to yours, a side by side comparison might be proof enough that the infringer copied your trade mark.

In some cases, it may be necessary for expert witnesses to provide evidence that the infringing trade mark has copied your work. In more rare instances, you may conduct a survey to show that the public might be reasonably confused about the trade mark’s true owner. However, it is up to the court to decide if they will accept such evidence as proof of the breach.

4. Enforce Your Rights

There are a number of ways you can enforce your trade mark rights. This includes:

• sending cease and desist letters to request that the owner of the infringing trade mark stops using it;
• making a formal opposition to a trade mark application to IP Australia; or
• taking the owner of the infringing trade mark to court.

The most suitable method of trade mark enforcement will depend upon your business’ unique circumstances, as well as the time and financial restraints of your business. 

Key Takeaways

Proving trade mark infringement can be a complex process. Some of the tips to prove trade mark infringement include:

• understanding what constitutes trade mark infringement;
• preparing evidence that you have rights to enforce your trade mark;
• providing evidence of the trade mark infringement; and
• considering your trade mark enforcement options.

Proving trade mark infringement is a complex process. Falsely accusing someone of trade mark infringement may have negative repercussions, making it important that you sufficiently prove any suspected trade mark infringement. If you need help protecting your trade mark rights, our experienced trade mark lawyers can help you. Get in touch with them on 1300 657 423 or by filling out the form on this page.

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