Steps to Take if You Receive a False Claim of Trade Mark Infringement
George Raptis
You may be surprised to one day receive a notice that you have committed trade mark infringement. If this has happened, you should interrogate whether you have, in fact, committed trade mark infringement. This is because it is common to find trade mark owners issuing notices, as they believe that their trade mark has been infringed. However, in reality, infringement would be difficult to make out. To help you respond to a claim of trade mark infringement, this article outlines:
- what trade mark infringement is; and
- the steps you should take if you receive a claim of trade mark infringement.
Infringement
When dealing with a claim of trade mark infringement, it is important that you understand what does and does not constitute trade mark infringement. This can help you reflect on your own conduct and gauge whether the claim is true or not. Ultimately, you should consult a trade mark lawyer who can give you greater personalised advice as to whether trade mark infringement has been made out.
What Is Trade Mark Infringement?
Under the Trade Marks Act, trade mark infringement arises when you have committed two things:
- firstly, you must have used a sign that is substantially identical with or deceptively similar to an already registered trade mark; and
- secondly, you must have used the sign in relation to the same goods or services with which the trade mark is registered in connection with.
A good example of trade mark infringement would be if a burger restaurant began to operate under the name ‘MacDonalds’. This would likely infringe on the trade mark owned by McDonald’s Inc., which is registered in connection with food.
What Is Not Trade Mark Infringement?
There are a number of acts that do not constitute trade mark infringement under the Trade Marks Act. Some of these exceptions require you to have acted in good faith. This means that a reasonable person in your position would have an honest belief that by using the trade mark, they would neither confuse consumers nor take advantage of the reputation gained by the business that owned the registered trade mark. You should note that whether you acted in good faith does not depend on what you intended personally. Instead, a court would objectively determine whether good faith was present based on your conduct.
Exceptions to Trade Mark Infringement
There is a summary of the exceptions to trade mark infringement under the Trade Marks Act for you in the table below.
| Explanation of Non-Infringement | Example |
| If you use the trade mark in good faith that contains your name, place of business or name of a predecessor in business. | You may use your family name ‘Macintosh’ to advertise your small-scale cleaning business as this is unlikely to deceive consumers or take advantage of Apple Inc.’s reputation. On the other hand, using your family name ‘Macintosh’ to run a computer software business is likely to infringe on the trade marks owned by Apple Inc. |
| If you use the trade mark in good faith to indicate the kind, quality, quantity, intended purpose, value or geographical origin of your good or service. | You may use the word ‘fresh’ to describe your fruit and vegetable produce without infringing the rights of trade mark owners who have protected the word ‘fresh’ in relation to their own goods or services. |
| If you use the trade mark in good faith to indicate the intended purposes of your goods or services. | If you sell accessories compatible with an iPhone product, you may advertise those accessories as intended to be used for the certain iPhone model. |
| If you use the trade mark for the purpose of comparative advertising. | You may advertise your cleaning service as offering a special that is more competitive than a special offered by another service. However, there is a risk that comparative advertising can mislead or deceive consumers, given the comparable business is often portrayed in a less positive light. |
| If you use the trade mark consistent with rights given to you under the Act. | You are using the trade mark pursuant to a licensing agreement. |
Tips for Responding to an Infringement Claim
Now that you are aware of the conduct that does and does not constitute trade mark infringement, here are some tips you should consider when responding to an infringement claim.
1. Do Not Ignore It
This may seem like an obvious point to make. However, many decide to overlook claims of infringement. This is risky, particularly because an infringement notice will require you to respond to the sender or cease your conduct within a specified period of time. Additionally, failure to do so could amount to further legal proceedings.
If you receive an infringement notice, it is important to read it carefully and determine whether you have committed the conduct specified in the claim. You should also verify the source of the claim and check whether they own the specified trade mark by searching it on the Trade Marks Register. Ultimately, you should treat the infringement claim as though it is real and on foot and therefore be vigilant in your response.
2. Seek Legal Advice
You might be able to determine for yourself from the claim received whether:
- you have committed the claimed conduct; and
- this constitutes trade mark infringement.
However, it would be wise to seek the advice of a lawyer to gauge further whether infringement has been made out. Further, your conduct might not strictly fall within the definition of infringement. However, there may be other conduct committed on your behalf that could amount to infringement. For this reason, it is important to get advice from an expert who can advise you not only on the likely outcomes of the infringement claim but help guide you through the process if the claim turns out to be true.
3. Respond Accordingly
After seeking the advice of a lawyer, you should respond to the infringement claim accordingly. If the lawyer determines that the claim was baseless, the claim will likely be ignored. However, if the claim turns out to be true, it is likely that you will either respond to the claim and abide by any of the demands written in the claim or dispute the claim. Either way, you should only act upon sound legal advice to avoid exposing yourself to unwanted legal proceedings and costs.
Key Takeaways
If you receive a claim of trade mark infringement, you should not ignore it. Rather, you should read it carefully and assess whether your conduct satisfies the claims made. You should then seek the advice of a lawyer to determine whether someone could make out a claim could against you. After receiving advice, you should then respond to the claim accordingly. If you need help with responding to a claim of trade mark infringement, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Unfortunately, no. IP Australia only accepts and rejects trade mark applications on the Register and does not monitor the marketplace for infringement claims. Therefore, it is the responsibility of trade mark owners themselves to seek out whether trade mark infringement has occurred.
Whilst the applicant may have not necessarily infringed on your trade mark rights as of yet, you may have the opportunity to oppose the application on the basis that it is similar or identical to your own trade mark. Before initiating opposition proceedings, you should seek the advice of a lawyer to determine whether you have a strong case for opposing the trade mark application on the grounds of opposition listed in the Trade Marks Act.