3 Examples of Trade Mark Infringement

Emily Young

• 27 July 2021
• 18 January 2022
• 5 min read

Your intellectual property (IP) is the most important aspect of your business. No matter how big or small your business is, you must protect your IP. This will protect your business and its value. This means it is also equally important to avoid infringing on someone else’s trade mark. To avoid doing so, you must know what constitutes trade mark infringement. This article will take you through three common examples of behaviour that constitutes trade mark infringement.

1. Your Trade Mark Is Identical or Deceptively Similar 

Trade mark infringement may occur if you are using a trade mark that is deceptively similar or identical to another business’ trade mark. This is particularly important if the trade mark belongs to a similar category of goods or services. When registering a trade mark, you will need to decide which goods or services category you intend to use your trade mark for. There is a list of 45 classes to choose from, each with relevant sub-classes to make it easier for you to decide where your good or service fits. Your trade mark registration will give you exclusive rights to use your trade mark in connection with the goods or services category you choose.

The purpose of a trade mark is to allow for distinctive branding, making it essential that no two trade marks are identical or similar enough to confuse.

For example, in 2016, the Australian burger chain ‘Down-N-Out’ was established. It had similar features to the American regional burger chain ‘In-N-Out Burger’. After a lengthy legal battle, the Australian business lost its case. The High Court found that the Australian business was trying to pass off its brand as affiliated with In-N-Out. This constitutes trade mark infringement.

Having an identical or similar trade mark to that of another business goes against the very nature of trade marks, making it important that you ensure your trade mark is unique. 

2. Your Trade Mark Is Too Similar to a Trade Mark in a Similar Class

Identical or deceptively similar trade marks in the same class generally constitute infringement. Similar to the above, there is the potential for trade mark infringement to occur if the trade mark is identical or similar to another trade mark in a similar or related category of goods or services. Several factors are taken into account when determining whether categories of goods or services are similar enough. This includes considering:

• the nature of the goods or service;
• the uses of the goods or services;
• the origin of the goods or service; and
• whether the goods or services are purchased and sold in the same way.

Each of these factors will be taken into consideration when determining whether two categories of goods or services are similar enough to cause consumer confusion.

For example, a backpack and a handbag may be considered similar goods.

3. A Similar and Well-Known Trade Mark Exists

Typically, a similar trade mark will only infringe on an existing trade mark if used in a similar class. For example, in theory, hardware products called ‘Apple’ would not be allowed. However, a perfume called ‘Apple’ could be acceptable. This is because hardware products and perfume are not considered the same category of goods or services. However, in instances where the trade mark is well known, such as the ‘Apple’ brand name, the category of goods or services is of less importance. Consumers may think there is a connection between the two trade marks, even if there is not, due to the notoriety of the Apple brand.

To determine if a trade mark is well known, the courts consider the extent that the public recognises the trade mark. The company’s reputation must be large enough that consumers may incorrectly believe there to be a product endorsement where there is none. 

Key Takeaways

Protecting your IP is an essential part of protecting the value of your business. To make the trade mark process easier, you must understand examples of trade mark infringement. Examples of trade mark infringement include trade marks that are:

• identical or deceptively similar in the same category of goods or services;
• identical or deceptively similar in a similar category of goods or services; and
• so well known that they have gained recognition beyond their category of goods or services.

Navigating IP can be tricky, so if you need help understanding trade mark infringement get in touch with our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.

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